The Complainant is TRS Quality, Inc., of Fort Worth, Texas, United States of America (“United States”), represented by Jeffrey M. Becker, United States of America.
The Respondent is Gu Bei, of Shanghai, People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <radioshacksucks.com> (“the Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2009. On August 12, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On August 13, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on September 7, 2009.
The Center appointed Luca Barbero as the sole panelist in this matter on September 11, 2009. 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
The Complainant is TRS Quality, Inc., a Delaware corporation with its principal place of business in Fort Worth, Texas, which is a wholly-owned subsidiary of the New York Stock Exchange RadioShack Corporation. The Complainant is the owner of the trademark RADIOSHACK, which is licensed to the RadioShack Corporation and is used by the licensee in connection with the retail sale of consumer electronic goods and services within the United States (“US”) and in other countries.
The Complainant is the owner of several trademarks registration consisting in the sign RADIOSHACK such as the US trademark No. 2019438 registered on November 26, 1996 in classes 100 101 and the US registration No. 2164296 registered on June 9, 1998 in classes 1 2 4 5 6 10 12 13 14 19 21 22 23 25 26 27 28 29 31 32 34 35 36 37 38 44 46 50 51 52 100 101 102 103 106.
The Complainant is also the owner of several trademark registrations for RADIO SHACK, such as the US trademark No. 679519 registered on June 2, 1959 in class 9; the US trademark No. 706962 registered on November 8, 1960 in class 36; the US trademark No. 796908 registered on September 28, 1865 in class 100.
The Complainant is also the owner of the domain name <radioshack.com> registered on August 9, 1996 and of the domain name <radioshackcorporation.com> registered on May 18, 2000.
The Respondent registered the Domain Name <radioshacksucks.com> on April 27, 2007.
5. Parties' Contentions
A. Complainant
The Complainant points out that its parent company RadioShack Corporation operates entities that use the RADIOSHACK brand in connection with the retail sale of consumer electronic goods and services within the United States, Mexico and other countries. The Complainant also states that products branded RADIOSHACK are sold through a variety of channels, including the website “www.radioshack.com” where consumers can shop online. Therefore, according to the Complainant, the trademark RADIOSHACK is highly distinctive and famous.
The Complainant contends that the Domain Name <radioshacksucks.com> is confusingly similar to trademarks and domain names in which Complainant has rights as it reproduces the well-known trademark RADIOSHACK in its entirety with the mere addition of the term “sucks”.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that the Respondent has no rights or bona fide interest in the Domain Name, nor has any right on the trademarks RADIOSHACK or RADIOSHACKSUCKS. The Complainant also states that the Respondent is not known by the above-mentioned names, does not operate a business or other organization under the said names, nor is otherwise authorized by Complainant to use the RADIOSHACK mark.
The Complainant emphasizes that Respondent has never used the Domain Name for any bona fide or non-commercial use and that the Respondent's use of the RADIOSHACK mark has never been authorized by the Complainant, the lack of consent from the Complainant supporting the finding that Respondent has no legitimate interest in the subject Domain Name.
In addition, the Complainant underlines that the Domain Name is not being fairly used for a genuine criticism site (or “gripe site”), since the Domain Name is redirected to a web site hosting several pay-per-click links generating revenues for the Respondent.
In light of the above, the Complainant concludes with reference to the issue of the rights or legitimate interest that the Respondent is diverting consumers to its site in order to aggregate advertising revenue through the use of sponsored links, thereby exploiting the RADIOSHACK mark for its own profit and that such use is not a legitimate non-commercial or fair use of the Domain Name.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Complainant's trademark RADIOSHACK was coined by the Complainant's predecessors and it has been used by the Complainant, its predecessors and licensees for more than 85 years, therefore having achieved a high level of global fame before the Respondent's registration of the Domain Name. In the view of the Complainant, it is thus inconceivable that the Respondent was not aware of the Complainant's trademark at the time of the registration of the Domain Name.
In light of the above, the Complainant concludes that the Respondent is trading off on the worldwide fame of the RADIOSHACK trademark and that the Respondent has registered and is using the Domain Name in bad faith to “wrongfully divert Complainant's customers to Respondent's link farm websites to accrue advertising revenue”.
B. Respondent
The Respondent did not reply to the Complainant's contentions and is in default.
Therefore the Panel shall decide this proceeding on the basis of the Complainant's submissions, drawing such inferences from the Respondent's default that are considered appropriate according to paragraph 14(b) of the Rules.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Domain Name Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of trademark registrations for RADIOSHACK and RADIO SHACK, such as the US trademark for RADIOSHACK No. 2019438 registered on November 26, 1996 in classes 100 101 and the US trademark for RADIO SHACK No. 679519 registered on June 2, 1959 in class 9.
The Panel finds that the Domain Name is confusingly similar to the trademarks owned by the Complainant, since it incorporates the Complainant's trademark in its entirety. Pursuant to a number of prior decisions rendered under the Policy the addition of a descriptive term to a trademark is not a distinguishing feature.
It is well established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature, inter alia,Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry's Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronics” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,
WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan,
WIPO Case No. D2004-0033 (“chart”, “miusic”, “arena”,“sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Web site Pros, Inc. and Quality,
WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna,
WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,
WIPO Case No. D2007-0565 (addition of the term “software to the trademark AUCHAN).
With particular reference to the addition of the term “sucks”, several panel decisions and judicial cases have addressed the question whether adding a derogatory word such as “sucks” to a domain name makes it unlikely that Internet users would be confused as to source or affiliation.
Indeed, considering the vulgar and offensive meaning of the term, it is unlikely to believe that companies would publish a website with such a self-denigrating domain name. On these grounds are based some panel decisions which concluded that a domain name containing a well-known trademark and the term “sucks” is not “confusingly similar” to the mark included in the domain name (See, e.g., Lockheed Martin Corporation v. Dan Parisi,
WIPO Case No. D2000-1015).
However, as held i.a. in La Quinta Worldwide L.L.C. v. Heartland Times LLC, MD Sullivan, WIPO Case No. D2007-1660, “it is not self-evident that Internet users would always take notice of the slang word following the trademark in the Domain Name and recognize its negative import”, also in light of the fact that many Internet users potentially interested in the Complainant's services accessing to the web site “www.radioshacksucks.com” may be not fluent English-speakers.
Therefore, the Panel finds that the addition of the derogatory term “sucks” to the well known trademark RADIOSHACK does not affect the finding that the Domain Name is identical or confusingly similar to the Complainant's trademark for the purposes of the Policy (see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.3, and the cases Wachovia Corporation v. Alton Flanders,
WIPO Case No. D2003-0596; Koninklijke Philips Electronics N.V. v. In Seo Kim,
WIPO Case No. D2001-1195; Sermo, Inc. v. CatalystMD, LLC,
WIPO Case No. D2008-0647, concerning the domain name <sermosucks.com>; Chubb Security Australia PTY Limited. v. Mr. Shahim Tahmasebi, WIPO Case No. D2007-0769 (for purposes of the first prong of the Policy, <chubbsux.com> is confusingly similar to CHUBB trademark); Societé Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 (<airfrancesucks.com> is confusingly similar to AIR FRANCE trademark); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,
WIPO Case No. D2000-0662 (<wal-martsucks.com> is confusingly similar to WAL-MART trademark).
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,
WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.
The Panel notes that, in order to determine whether the Respondent is making a legitimate use of a domain name containing the negative term “sucks”, it is necessary to refer to the contents of the corresponding web site, since, as stated in Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003-0596, “Simply having a domain name with “-sucks” in the name cannot, by itself, establish fair use; one must look to the content of the website to determine if there is an exercise of free speech which allows the Respondent to rely on the fair use exception. To do otherwise would legitimize cybersquatters, who intentionally redirect traffic from a famous mark, simply through the use of a derogatory term”.
In the present case, the Panel notes that, as stated by the Complainant, the Domain Name is not redirected to a “gripe” web site, but is pointing to a web site with various pay-per-click links mainly aimed at directing visitors to competing third party commercial websites. Therefore, in light of such use of the disputed Domain Name, the Panel finds that it is not necessary to further elaborate on the issue whether the use of a domain name including a trademark with the addition of a negative term as “sucks” for a criticism web site shows a legitimate interest under the Policy.
Furthermore, the Panel finds that the use of the disputed Domain Name merely for a pay-per-click page which directs visitors to various third party commercial websites does not constitute a legitimate, non commercial use of the disputed Domain Name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044. See also inter alia Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the Domain Name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the Domain Name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
Moreover, the Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name, has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make any legitimate, non-commercial or fair use of the Domain Name.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the Domain Name; or
(ii) the holder has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder' s website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration the Panel notes that in light of use of the trademark for more than 85 years and the amount of advertising and sales of Complainant's products worldwide also through the web site “www.radioshack.com”, the Respondent was more likely than not aware of the Complainant's trademark.
As to the use in bad faith, the Panel finds that Internet users, in light of the contents of the web page linked to the Domain Name, displaying various commercial links referred to products and services of competitors, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website. Moreover, in all likelihood, the Respondent profits by earning pay per click revenues (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection,
WIPO Case No. D2006-1044; Fry's Electronics, Inc v. Whois ID Theft Protection,
WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin,
WIPO Case No. D2007-0286).
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's services.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.
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 <radioshacksucks.com>, be transferred to the Complainant.
Luca Barbero Sole Panelist
Dated: September 25, 2009
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