WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Infinity Broadcasting Corp. v. Quality Services, Inc.

Case No. D2000-0361

 

1. The Parties

Complainant is Infinity Broadcasting Corp. ("Infinity") a Delaware corporation with its principal place of business located at 51 West 52nd Street, New York, New York, 10019 USA

Respondent is Quality Services, Inc. a corporation located at 5225 Pooks Hill Road, Suite 1421, Bethesda, Maryland 20814 USA.

 

2. The Domain Name and Registrar

The domain name at issue is "wpgc.com". The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia 20170 USA.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant via email on May 1, 2000. On May 3, 2000, the Center received hardcopy of the Complaint.

On May 14, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On May 16, 2000, after sending a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On May 28, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On June 19, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On July 5, 2000, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Thomas Halket (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

On July 20, 2000, the Center notified the parties of the Decision rendered by the Sole Panelist. On July 21, 2000, the Registrar informed the parties of its receipt of the Decision and the date of the implementation of the Decision.

On July 22, 2000, the Sole Panelist requested that the Center withdraw his Decision.

On July 25, 2000, the Center notified the parties of the nullification of the Decision and the Complainant requested that it be permitted to submit a supplemental filing.

On July 25, 2000, the Registrar acknowledged receipt of the nullification of the Decision.

On July 27, 2000, the Respondent sent email to the Center objecting to any supplemental filing by Complainant and the Center informed the parties that no more submissions would be accepted before the new Panel was appointed.

On August 29, 2000, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Replacement Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Replacement Panelist.

The Replacement Panelist granted the request of Complainant to submit a supplement filing and of Respondent to submit a late-filed Response.

On September 20, 2000, the Complainant filed its Supplemental Filing. On September 29, 2000, the Respondent filed its Response to Complainantís Supplemental Filing.

 

4. Factual Background

Since at least October 1954, Infinity has used the WPGC mark in interstate commerce in connection with its radio broadcasting services, including the broadcasting services of radio station WPGC-FM. Infinity is the owner of, inter alia, the following valid, subsisting and existing federal service mark registration with the United States Patent and Trademark Office: United States Registration No. 1,968,355, registered on April 16, 1996, for the mark WPGC (for radio broadcasting services). Over the past forty-five years, Infinity has spent a substantial sum of money advertising and promoting its services under the WPGC mark, which has resulted in the creation of goodwill and popularity for the WPGC mark.

As a result of Infinity's long use of the WPGC mark, its advertising and promotional efforts and expenditures in connection with the mark, and the wide recognition achieved for the mark, the public has come to associate the WPGC mark with services originating with, emanating from, sponsored by or otherwise associated with or approved by Infinity. In addition, the WPGC mark also has become a valuable symbol of Infinity.

On September 7, 1998, Respondent registered the domain name "wpgc.com". After learning of Respondentís registration of the "wpgc.com" domain name, counsel for Infinity sent a letter to Respondent, advising it that Infinity was the owner of the WPGC mark, and that Respondentís registration of the domain name "wpgc.com" constituted a violation of Infinityís right in the WPGC mark. Infinity also requested that Respondent transfer the domain name to Infinity. Infinity received no response to this letter.

Since the filing of the Complaint in this dispute, Complainant discovered that Respondent has registered a separate domain name "wpgcfm.com" in addition to numerous other domain names.

At the time the Sole Panelist rendered his decision, Respondent had not posted any content on the "www.wpgc.com" website. Subsequently, Respondent posted content indicating that the "wpgc" phrase is an acronym for the slogan "we promote good communities" as used by the website "www.areaguides.com".

On September 20, 2000, in its Supplemental Filing, Respondent asked that the additional domain name "wpgcfm.com" be transferred together with the transfer of the Domain Name "wpgc.com" as requested in the original Complaint.

On September 29, 2000, in its Response to Complainantís Supplemental Filing, Respondent has offered to transfer the domain name "wpgcfm.com" to Complainant.

 

5. Partiesí Contentions

A. Complainant contends that it has a registered service mark in WPGC. Complainant further contends that the Domain Name is identical with and confusingly similar to the WPGC service mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent does not contest Complainantís assertion that it has a registered service mark in WPCG or that the Domain Name is identical with the service mark. Respondent does contend that despite being identical with Complainantís service mark, the Domain Name is not confusingly similar because it is being used in a different line of commerce.

Respondent contends that it has rights or legitimate interest in the Domain Name.

Respondent denies that the registration and use of the Domain Name is in bad faith.

Respondent contends that Claimant is engaged in reverse hijacking.

 

6. Discussion and Findings

Identity or Confusing Similarity.

Complainant contends and Respondent does not contest that Complainant has a registered service mark in WPGC. Complainant further contends and Respondent does not contest that the Domain Name is identical with the WPGC service mark pursuant to the Policy paragraph 4(a)(i).

The Domain Name contains the phrase "wpgc" which is identical to the registered service mark, See, e.g., Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165 (holding that the domain name "ROBOHELP.COM" is identical to complainantís registered ROBOHELP trademark, and that the "addition of ".com" is not a distinguishing difference"); Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 ("the addition of the generic top-level domain (gTLD) name Ď.comí is likewise without legal significance since use of a gTLD is required of domain name registrants"); "InfoSpace.com" v. Tenenbaum Ofer, WIPO Case No. D2000-0075 ("The domain name "info-space.com" is identical to Complainantís INFOSPACE trademark. The addition of a hypen and ".com" and not distinguishing features").

Therefore, the Panel finds that the Domain Name is identical with to the registered WPGC service mark owned by Complainant pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the use of the WPGC mark.

The Policy paragraph 4(c) allows three non-exclusive methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Names:

(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.

Respondent has offered no evidence that the use of the phrase "wpgc" as an acronym for "we promote good communities" was utilized prior to notice of this dispute. In fact, the evidence offered by Complainant supports the finding that the phrase "wpgc" was only posted after the dispute arose. See, The Chip Merchant, Inc. v. Blue Star Electronics, WIPO Case No. D2000-0474. Therefore, Respondent has not met its burden of showing the existence of the elements of the Policy paragraph 4(c)(i).

Respondent has offered no evidence that it has been commonly known by the domain name. Therefore, Respondent has not met its burden of showing the existence of the elements of the Policy paragraph 4(c)(ii).

Respondent has offered no evidence that it operates the "www.wpgc.com" website for noncommercial purposes or is making some other fair use of the domain name. Therefore, Respondent has not met its burden of showing the existence of the elements of the Policy paragraph 4(c)(iii).

Therefore, the Replacement Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product

The evidence offered by Complainant regarding the listing of the Domain Name for sale does not indicate that any offers to sell have been made to the Complainant or to the competitors of Complainant. Therefore, the Complainant has not met its burden of showing the existence of the elements of the Policy paragraph 4(b)(i).

The Respondent declares that it has no intention of preventing the Complainant as owner of the service mark WPGC from reflecting its mark in the corresponding Domain Name. Respondent asserts that its only use of the Domain Name is to employ the use of the slogan "we promote good communities" to address and promote Respondentís own website "www.areaguides.com" and Respondentís related services of community guides containing information in the form of web postings by customer sponsors. Respondent further asserts that its use of the Domain Name "wpgc.com" has nothing to do with owning or operating radio stations.

However, in addition to the Domain Name "wpgc.com", Respondent has also registered the domain name "wpgcfm.com". The addition of the letters "fm" to the Domain Name create the impression that the Domain Name relates to the owning or operating of a radio station.

Respondent has registered numerous domain names constituting a pattern. Within this pattern, the Respondent has registered two closely related domain names targeting the service mark WPGC as it relates to the owning and operating of a radio station. This demonstrates the intent to prevent the owner of the service mark from reflecting its service mark in the corresponding Domain Name. Therefore, the elements of the Policy paragraph 4(b)(ii) are satisfied.

There is no evidence that Respondent is seeking to disrupt the business of a competitor. Therefore, the elements of the Policy paragraph 4(b)(iii) are not met.

Prior to the filing of this Complaint, Respondent posted no content on either the "www.wpgc.com" or "www.wpgcfm.com". The Replacement Panelist finds that Respondent has not attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainantís service mark. Therefore, the elements of the Policy paragraph 4(b)(iv) are not met.

The Replacement Panelist finds that Complainant has shown the elements of the Policy paragraph 4(b)(ii) and finds that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

Reverse Hijacking.

The conclusion of the Panel that Complainant has demonstrated the necessary elements in its Complaint precludes a finding that Complainant has engaged in reverse hijacking.

Additional Domain Name

Complainant requested in its Supplemental Filing that the additional domain name "wpgcfm.com" also be transferred. The Replacement Panelist declines the invitation to so expand the scope of the Complaint without the filing of a specific Complaint regarding the domain name "wpgcfm.com".

 

7. Decision

The Replacement Panelist concludes (a) that the Domain Name "wpgc.com" is identical with Complainantís registered service mark WPGC, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Replacement Panelist orders that the Domain Name be transferred to Infinity Broadcasting Corporation.

 


Richard W. Page
Presiding Panelist

October 8, 2000