The Complainant is Cox Radio, Inc., Atlanta, Georgia, United States of America, represented by Dow, Lohnes & Albertson, PLLC, United States of America.
The Respondent is Domain Administrator, Huntington Beach, California, United
States of America.
2. The Domain Name and Registrar
The disputed domain name <kiss1041.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2006. On March 28, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On March 31, 2006, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2006.
The Center appointed Jeffrey M. Samuels as the sole
panelist in this matter on May 4, 2006. The Panel finds that it was properly
constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance
with the Rules, paragraph 7.
4. Factual Background
Complainant Cox Radio, Inc. owns the Atlanta radio station that broadcasts on radio frequency 104.1 FM. Since at least as early as October 2000, Complainant has extensively promoted and advertised its radio station under the mark KISS 104.1. Complainant operates a website, accessed through kiss1041fm.com, which promotes its KISS 104.1 services.
Respondent registered the domain name <kiss1041.com> on May 15, 2002. Currently, the domain name does not resolve to an active website. However, when the use and registration of the domain name came to Complainant’s attention, the domain name resolved to a website containing a list of sponsored links relating to radio stations, music, travel, and entertainment. The site also contained prominent category links to additional sponsored links and sponsored “results.” The site also generated a “pop up” ad that appeared when users first entered the site, selected the “Back” button, or attempted to leave the site.
On January 30, 2006, Complainant’s counsel sent
a letter (see Annex E to Complaint) to the Administrative and Technical Contact
for <kiss1041.com> at the address listed in the WHOIS contact information,
which was returned as “undeliverable.” The same letter was also
sent that day via email to the address listed for Domain Administrator in the
WHOIS database. Complainant’s counsel never received a response to this
email.
5. Parties’ Contentions
A. Complainant
Complainant contends it possesses common law trademark rights in the KISS 104.1 mark. Such contention is based on Complainant’s use of such mark for over five years on the air, online, and in other media. Complainant also maintains that it has made significant off-air marketing expenditures in the form of advertising and website content using the term KISS 104.1 on its written material, radio broadcasts, and on its website.
Complainant further argues that the disputed domain name <kiss1041.com> is confusingly similar to the mark KISS 104.1 in that the only difference is that the name does not include a space between the letter “s” and the number “1” and a period between the numbers “4” and “1”.
Complainant maintains that it has never authorized Respondent to use the KISS 104.1 mark and that Respondent has not established rights or legitimate interests in the domain name. According to Complainant, Respondent cannot be found to be using the domain name for any bona fide purpose since the domain name does not currently resolve to an active website and the earlier use of the domain name in connection with sponsored links cannot be considered “bona fide.” Complainant also asserts that Respondent has made no noncommercial or fair use of the domain name without intent to misleadingly divert consumers for commercial gain.
Complainant argues that Respondent’s registration of the domain name and its failure to use such name for legitimate purposes establish that Respondent has used and registered the domain name in bad faith under paragraph 4(b) (iv) of the Policy. Complainant contends that there is no evidence that Respondent was ever legitimately known as KISS1041 and that the only evident reason for Respondent to have registered the domain name was to attract users looking for Complainant’s website for Respondent’s own commercial gain.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant, through its use of the KISS 104.1 mark and its advertising and promotional activities associated therewith, has established common law rights in the mark KISS 104.1. Through such use and advertising, the KISS 104.1mark has become a distinctive identifier of Complainant’s goods and/or services.
The Panel further concludes that the domain name is at least confusingly similar
to Complainant’s KISS 104.1 mark. The removal of a space and a period
from Complainant’s mark does not avoid a finding of confusing similarity.
See, e.g., Cox Holdings, Inc v. Gary Lam, WIPO
Case No. D2004-0931 (domain name <kiro7.com> is confusingly similar
to KIRO 7 mark.)
B. Rights or Legitimate Interests
Complainant alleged that Respondent has no rights or legitimate interests in the domain name. Respondent presented no evidence to the contrary and there is no evidence in the record that supports a determination that such rights or legitimate interests exist. See, e.g., Tercent Inc. v. Lee Yi, FA139720 (NAF February 10, 2003) (“the Panel is unwilling to find that Respondent’s use of the disputed domain name, which features nothing other than a series of hyperlinks and a banner advertisement equates to a bona fide offering of goods or services as contemplated by [paragraph 4(c)(1) of the Policy].”
The disputed domain name currently produces an error page. According to evidence submitted by the Complainant, it recently resolved to a web directory offering links regarding a variety of topics and including pop-up advertisement. On its face, and in the absence of any comments from the Respondent, such an undertaking cannot constitute evidence of rights or legitimate interests in a domain name which is confusingly similar to a trademark.
Therefore, the Panel comes to the conclusion that the Complainant has carried its burden of proof under the second element.
C. Registered and Used in Bad Faith
The evidence establishes that the disputed domain name does not currently resolve
to a website. Such “passive” use of a domain name supports a determination
of “bad faith” registration and use, particularly when considered
in light of Respondent’s failure to respond to the complaint, its apparent
failure to provide accurate contact information, and the impossibility of conceiving
of a good faith use of the domain name. See e.g., Telstra Corp. Ltd. v. Nuclear
Marshmallows, WIPO Case No. D2000-0003.
The Panel further concludes that Respondent’s earlier use of the domain
name, which led users to sponsored links and pop-up ads, also constitutes evidence
of bad faith registration and use. Under such circumstances, the Respondent
may be found to have intentionally attempted to attract internet users to the
Respondent’s website or other on-line location, by creating a likelihood
of confusion with Complainant’s mark as to the source of such site or
of the products offered at, or linked to, such site, within the meaning of paragraph
4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <kiss1041.com> be transferred to the Complainant.
Jeffrey M. Samuels
Sole Panelist
Dated: May 10, 2006
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