DECISION

Clear Channel Communications, Inc. v. RadioAid.com. LLC

Claim Number: FA0405000273224

PARTIES

Complainant is Clear Channel Communications, Inc. (“Complainant”), represented by Pamela B. Huff of Cox & Smith Incorporated, 112 East Pecan, Suite 1800, San Antonio, TX 78205.  Respondent is RadioAid.com, LLC (“Respondent”), 1006 Banister Lane, Austin, TX 78704.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <clearchannelsucks.net>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com (hereinafter “Itsyourdomain.com”).

PANEL

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.

Clive Elliott as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 13, 2004; the Forum received a hard copy of the Complaint on May 17, 2004.

On May 21, 2004, Itsyourdomain.com confirmed by e-mail to the Forum that the domain name <clearchannelsucks.net> is registered with Itsyourdomain.com and that the Respondent is the current registrant of the name. Itsyourdomain.com has verified that Respondent is bound by the Itsyourdomain.com 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 25, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 14, 2004 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@clearchannelsucks.net by e-mail.

A Response was received on June 15, 2004.  As the hard copy of the Response required by Paragraph 5(a) and (b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) was not received in a timely fashion and the Response did not contain the certification statement required by Paragraph 5(b)(viii) of the Rules, this Response is deficient. 

Although the Response was received past the Response deadline and did not contain the certification statement required by the Policy Rules, the Panel may exercise its discretion and choose to consider the Response in reaching its decision in this case.  See Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a Panel may consider a response which was one day late, and received before a Panelist was appointed and any consideration made); see also Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process.").

While a soft copy of the Response was received in time, a hard copy was not.  Given the substantial compliance with the Rule and on the basis that substance should, where possible and in appropriate cases, take precedence over form, the evidence is admitted.  As to failing to properly certify the Response, this should be done forthwith, even though it is, in effect, out of time.  However, for reasons which will become apparent below, that is a matter for the Respondent to decide.

On June 30, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant maintains that it has established rights in the CLEAR CHANNEL mark through registration of the mark with the United States Patent and Trademark Office Complainant states that Respondent has registered the domain name <clearchannelsucks.net>, of which the predominant part is the trademark owned by Complainant.

Complainant asserts that Respondent redirects consumers from <clearchannelsucks.net> (a domain name confusingly similar to Complainant's trademark) to <radioaid.com>, a site on which consumers can purchase Respondent's radio streaming.  Hence, it says Respondent has acquired the domain name solely for the purpose of commercial gain by diverting potential consumers of the mark at issue to Respondent’s radio streaming site, which provides services in direct competition with Complainant.

Complainant asserts 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, but is merely using the domain name at issue in anticipation of commercial gain by diverting consumers to its online streaming radio site services.

Complainant says that upon discovering the domain name and confirming that the web site associated with that domain was not a "protest" site, it contacted Respondent and requested that Respondent abandon the domain name.  Respondent responded by refusing to relinquish the domain name.  Respondent alleges that the domain is a vehicle for stating its stance on Clear Channel's position in the music industry.  It is the Complainant's position, however, that the Respondent exhibits bad faith in its attempt to wrap itself in the First Amendment typically associated with "protest" sites [through its "sucks" domain name and through its statements regarding its "stance on Clear Channel's position in the music industry"] when its site is simply directed to services offered by Respondent. 

B. Respondent

Respondent states that the domain name is not similar to the registered trademark of Clear Channel and that the Complainant is not known by the domain name <clearchannelsucks.com>.

It says that its use of the domain name is merely a tool to redirect users to Respondent's <radioaid.com> home page.

Respondent asserts its website has always protested against the Complainant and that RadioAid.com has audio advertisements and links pointing to the wrongdoings of the Complainant with respect to dealing with unsigned and independent artists.  Respondent says Complainant failed to recognize this in their Complaint to the arbitration panel.

Respondent argues that the parties do not compete due to different businesses and services.  Respondent says that the two companies have opposite end of the spectrum customers.  It suggests that Complainant’s customers have no option of turning from any FM/AM/XM TERRESTRIAL radio station towards Respondent’s STREAMING RADIO on any type of TERRESTRIAL radio device. 

Respondent says that its site delivers streaming radio to all listeners for free and charges artists for webspace and bandwidth usage on its RadioAid.com servers and that Complainant has no such business practice. 

Finally, it notes that Complainant owns the domain name <clearchannelsucks.com>.  It argues that this has limited the ability for free speech advocates to use this domain to establish their protest against the Complainant and is not used at all by the Complainant for any purposes. 

FINDINGS

Pursuant to paragraph 4(a) of the Policy it is found that:

(1) The domain name <clearchannelsucks.net> is confusingly similar to the CLEAR CHANNEL trademark and name.

(2) That the Respondent has no rights or legitimate interests in respect of the domain name <clearchannelsucks.net>; and

(3) The said domain name was registered and is being used in bad faith.

DISCUSSION

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 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

Complainant maintains that it has established rights in the CLEAR CHANNEL mark through registration of the mark with the United States Patent and Trademark Office. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

Complainant argues that the addition of the word “sucks” to Complainant’s registered CLEAR CHANNEL mark results in a domain name that is confusingly similar to its mark.  See Caixa d’Estalvis y Pensions de Barcelona ("La Caixa") v. Namezero.com, D2001-0360 (WIPO May 3, 2001) (“The general principle taught by precedents seems to be that, when a –SUCKS domain name has been registered for the main purpose of making money, it has been registered in bad faith, while when the purpose was really to provide criticism, political or otherwise, a finding of bad faith would not be appropriate.”); see also ADT Services AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among Panels on "sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat Complainant's confusing similarity argument); see also Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (“In domain name disputes it is critical whether the accused domain name itself signifies parodic or critical purposes, as opposed to imitation of trademark.”).

An interesting analysis is made by the Panelist Sandra Franklin, as follows:

There is a split among the UDRP decisions regarding whether a "-sucks" domain name is confusingly similar to the trademark to which it is appended.  The majority of the decisions have found confusing similarity. In a minority of decisions, and in some dissenting opinions, Panelists have deemed a "-sucks" addition to a well-known trademark to be an obvious indication that the domain name is not affiliated with that trademark owner.  This Panel, however, concurs with the notion that every case must be assessed on its own merits, as put forth in Cabela’s Inc. v. Cupcake Patrol, FA 95080 (National Arbitration Forum, August 29, 2000), and therefore does not accept the per se rule, resulting in an automatic finding of no confusing similarity.  Complainant’s arguments on the inappropriateness of the per se rule are persuasive.

See Wachovia Corporation v. Flanders, Case No. D2003-0596 (WIPO September 17, 2003).

The panelist agrees with this approach and adopts it in the present case. It is found, on the particular facts, that Complainant's confusing similarity argument succeeds and imitation of its trademark is the likely outcome.

The first ground is thus made out.

Rights or Legitimate Interests

Complainant contends that Respondent’s use of the disputed domain name to merely redirect users to Respondent’s commercial website at the <radioaid.com> domain name does not constitute protected speech, but is rather an attempt to capitalize on Complainant’s mark to attract Internet users to Respondent’s website.  The Panel may find that this is evidence that Respondent lacks rights or legitimate interests in the disputed domain name.  See Name.Space Inc. v. Network Solutions, [2000] USCA2 17; 202 F.3d 573, 585 (2d Cir. 2000) (although the content of Respondent’s site may be entitled to First Amendment protection, Respondent’s use of Complainant’s trademark in the domain name of its site is not protected. Since Respondent’s domain name merely incorporates Complainant’s trademark, it does not constitute a protectable, communicative message); see generally Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding no rights or legitimate interests from Respondent's alleged "free speech" use of the domain name <vivendiuniversalsucks.com>, which fully incorporated Complainant's VIVENDI UNIVERSAL mark, because the domain name was passively held).

Complainant stresses that Respondent only uses the domain name to redirect users to the <radioaid.com> website, which is not a forum for free speech against Complainant but is actually a commercial website.  The Panel may find that Respondent’s use of the disputed domain name for these purposes is illegitimate.  Compare Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) (finding that “the goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain”); Britannia Bldg. Soc'y  v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001) (finding that Respondent has legitimate interests in the <britanniabuildingsociety.org> domain name because the low level of confusion was negligible due to its use in connection with a "genuine criticism site," which displayed a disclaimer and link to Complainant's official website).

Respondent invited the panelist to visit its website (at RadioAid.com) to verify that its site is a vehicle for protest and criticism against “Clear Channel”. To some extent it is. The panelist noted for example the following reference at a linked site: <http://www.salon.com/ent/clear_channel>:

“Radio's big bully” - A complete guide to Salon's reporting on Clear Channel, the most powerful -- and some would say pernicious -- force in the music industry.

That, however, is but a small part of the site.  Indeed, the site is directed very much to radio streaming services, with the protest theme very much a secondary consideration. This suggests that there is merit in Complainant’s argument that Respondent’s efforts to wrap itself in the First Amendment typically associated with "protest" sites when its site is simply directed to services offered by Respondent should not be accepted.

It seems, again on the facts of this particular case, that this type of activity is not the sort to support a claim to a legitimate interest which should be recognized in this forum. The ground is thus made out.

Registration and Use in Bad Faith

Complainant contends that Respondent is using the CLEAR CHANNEL mark without permission to attract users to its commercial website at the <radioaid.com> domain name. The Panel may find that this is evidence that the disputed domain name was registered and used in bad faith. See Jenner & Block LLC v. Defaultdata.com, FA 117310 (Nat. Arb. Forum Sept. 27, 2002) (“Respondent’s argument that there is an inherent conflict between the Internet and the Constitutional right to free speech at the address to a business sounds impressive but is no more correct that than the argument that there is a Constitutional right to intercept telephone calls to a business in order to speak to customers. Respondent’s conduct is not the equivalent of exercising the right of free speech outside Complainant’s business street address but of impermissibly blocking traffic to that street address.”).

Reference is also made to Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000) (finding bad faith where Respondent is intentionally using <walmartcanadasucks.com>, <wal-martcanadasucks.com>, <walmartuksucks.com>, <walmartpuertorico.com> and <walmartpuertoricosucks.com> domain names to attract Internet users to his websites).

Again, for the reasons advanced above, it is found that the ground is made out.

DECISION

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

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

Panelist Clive Elliott
Dated: July 13, 2004

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