WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CBS Radio, Inc. v. 102.7WEBN Radio
Case No. D2000-1063
1. The Parties
The Complainant is CBS Radio, Inc., a Delaware corporation with its principal place of business in New York, New York, USA. Complainant is represented in this proceeding by Naomi B. Waltman, Esq., 51 West 52nd Street, New York, New York 10019, USA.
The Respondent in this proceeding is 102.7WEBN Radio of 1111 St. Gregory, Cincinnati, Ohio 45202, USA, currently a subsidiary of Clear Channel Communications of San Antonio, Texas, USA. Respondent is represented by Baila H. Celedonia, Esq., Cowan, Liebowitz & Latman, P.C., 1133 Avenue of the Americas, New York, New York 10036-6799, USA.
2. The Domain Name and Registrar
The domain name in dispute is: <q102.com>.
The registrar for the disputed domain name is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on August 15, 2000. On August 29, 2000, the Center requested that the registrar, NSI, check and report back on the registrant for the domain name <q102.com>. On September 1, 2000, NSI reported to the Center that the registrant was the
Respondent, 102.7WEBN Radio, and that the administrative contact was Clear Channel Communications, 10835 Gulfdale Street, San Antonio, Texas 78216, USA.
On September 9, 2000, the Center received an e-mail communication from Ms. Baila Celedonia stating "my client, 102.7WEBN RADIO, has received an information copy of a Complaint filed by CBS RADIO INC." and concluding, "Please send all future communications to my attention, as attorney for Respondent 102.7WEBN RADIO." On September 22, 2000, the Center forwarded a copy of the Complaint to Ms. Celedonia by registered mail and by e-mail, and this proceeding officially began.
The Center received a Response by e-mail on October 12, 2000. On October 13, 2000, the Center received a "Response" signed by Ms. Celedonia and her firm as "Attorneys for Respondent." Although the "Respondent" named in the caption of the "Response" was "102.7WEBN RADIO" (the registrant of the disputed <q102.com> domain name), the body of the Response referred to the "Respondent" as Clear Channel, now the parent company of the Respondent. The Response included a request that this case be decided by a three (3) member Panel.
The Administrative Panel submitted their Declarations of Impartiality and Independence by December 29, 2000, and the Center proceeded to appoint the Panel on January 4, 2001.
The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.
This Decision originally was due by January 18, 2001, but the Panel determined that the parties had not submitted sufficient material for the Panel to reach a Decision. As a result, on January 26, 2001, the Panel, via the Center, sent the parties Procedural Order No. 1 directing them to submit certain further documentation by February 9, 2001. The parties duly complied.
The new due date for this Decision is April 2, 2001.
4. Factual Background
The Complainant is the owner of the trademark "Q102" and uses it for its radio station WKRQ-FM (101.9) in the Cincinnati, Ohio, USA area. The Respondent, 102.7WEBN Radio, the registered owner of the disputed domain name, is a direct competitor of the Complainant in the Cincinnati market.
The Respondent, 102.7WEBN Radio in Cincinnati, Ohio, registered the disputed domain name <q102.com> on May 18, 1995. Owing to Federal Communications Commission (FCC) restrictions on regional market share, Respondent's then parent company, Jacor (later merged into Clear Channel), was able to acquire, but then had to divest, the Cincinnati radio station WKRQ-FM, "Q102", which was acquired by the Complainant's predecessor-in-interest in December, 1996. However, Respondent held on to the disputed domain name <q102.com>.
Nothing more was heard of the disputed domain name until an unspecified date in 1998 when, for a time, the Respondent used the name for a website that, according to the
Respondent, parodied the Complainant's website. At the Complainant's request, the Respondent ceased using the website to try to parody the Complainant. Later, during 1999, the Respondent's parent, Clear Channel, used the disputed domain name for its station KQ102 in San Antonio, Texas and, as of mid-2000, for its radio station Q102 in Philadelphia, Pennsylvania, USA.
In this proceeding, the Complainant is seeking to have the disputed domain name <q102.com> transferred to it to be paired with its radio station WKRQ-FM (101.9) in Cincinnati.
5. The Partiesí Contentions
(a) Since at least July 1, 1975, Complainant or its predecessors-in-interest have used the "Q102" service mark in interstate commerce in connection with radio broadcasting services.
(b) Complainant is the owner of a U.S. registered service mark giving it the exclusive right to use "Q102" in commerce.
(c) Complainant has spent a substantial sum of money advertising and promoting its radio braodcasting services under the "Q102 mark," which has resulted in the creation of a great deal of goodwill and popularity for the mark.
(d) Complainant also maintains a presence on the Internet, through a web site located at www.Q102online.com. This web site contains numerous references to Complainantís "Q102" service mark.
(e) On May 18, 1995 Respondent registered the domain name <q102.com>, which is identical to the Complainant's mark "Q102". The addition of the generic top-level domain router ".com" is without legal significance.
(f) Respondent registered the disputed domain name in bad faith. Respondent neither had, nor currently has, any rights or legitimate interests in the domain name. Respondent is not commonly known by the name "Q102" or "Q102.COM". To the contrary, the Respondent is a Cincinnati, Ohio radio station currently owned by Clear Channel Communications, and is a direct competitor of the Complainant's WKRQ radio station in the Cincinnati market.
(g) Respondent registered the <q102.com> domain name with full knowledge of Complainantís rights in, and long use of, the Q102 mark. By using the disputed domain name, Respondent has attempted to attract Internet users to its web site and has created a likelihood of confusion with the Complainantís mark.
(h) Respondentís bad faith is further demonstrated by the fact that it has registered the disputed domain name to prevent Complainant from reflecting the Q102 mark in its domain name. Respondent has engaged in a pattern of such conduct: for example, Respondent also registered the domain name <wgrr.com>. Like the Q102 mark, WGRR is a registered trademark of Complainant, and is used in connection with Complainantís WGRR radio station in Cincinnati, Ohio.
(i) The disputed domain name should be transferred to the Complainant.
(a) As a result of a series of mergers and acquisitions, Respondent WEBN-FM ("102.7WEBN Radio"), located at 102.7 on the FM dial in Cincinnati, is currently owned by Clear Channel. 102.7WEBN Radio was previously owned by Jacor Broadcasting Corporation (Jacor), which registered the disputed domain name, <q102.com>, in the name of 102.7WEBN Radio. Jacor registered the domain name with the intention of using it in connection with its broadcasting services at some point in the future and, in fact, the domain name is presently being used by Clear Channel to promote its popular radio station WIOQ-FM in Philadelphia, Pennsylvania, known as "Q102 Philly".
(b) Both Complainant, CBS, and Clear Channel are conglomerates that own hundreds of radio stations all over the USA.
(c) Q102 Philly is the fourth most listened to radio station in its market according to Arbitron, the nationally recognized audience survey company. Q102 Philly has used the designation "102" in connection with its radio station and broadcasting services since 1989, and has extensively promoted its broadcasting services under that mark on bill boards, other promotional material and on its website.
(d) Respondentís predecessor-in-interest, Jacor, registered the disputed domain name <q102.com> on May 18, 1995. Although, at the time, neither Jacor nor its parent company, Jacor Communications, Inc., owned any radio stations that used the "Q102" designation, they were in negotiations to acquire one in connection with the planned acquisition of Citicasters, Inc. ("Citicasters")óa broadcasting company that owned numerous radio stations across the nation, including WKRQ-FM "Q102" in Cincinnati, Ohio, the station through which Complainant is claiming its rights. Thus, Jacor registered the domain name on the assumption that it would be useful in the future in connection with its broadcasting services once it acquired WKRQ-FM in Cincinnati.
(e) Following a review of the acquisition by the Federal Communications Commission (FCC) and the Department of Justice (DOJ), the DOJ directed Citicasters to sell WKRQ-FM (101.9) prior to the close of the Citicasters merger as a condition for DOJ approval. The U.S. DOJ did not want Jacor Communications to control several of the largest radio stations in the Cincinnati metropolitan area.
(f) As a result of the DOJís findings, on December 23, 1996, Citicasters entered into an Asset Exchange Agreement (the "Asset Exchange Agreement") with American Radio Systems Corporation, a Delaware corporation ("ARS") and American Radio Systems License, Corp., a Delaware corporation "ARSLC")óthe predecessors-in-interest to the Complainant in this action, CBS Radio, Inc. ("CBS Radio"). Pursuant to the terms of the Asset Exchange Agreement, Citicasters exchanged the radio station WKRQ-FM (101.9) in Cincinnati for the radio stations WVOR-FM, WHAM-AM and WHTK-AM. As a result, ARS and ARSLC-now owned by CBS Radioóbecame the owner of "Q102" in Cincinnati instead of Clear Channel.
(g) In May of 1999, Jacor Communications was acquired by Clear Channel. As a result, Clear Channel became the owner of all of the assets of Jacor Communications, including 102.7WEBN Radio (the registrant of the domain name) and the <q102.com> disputed domain name.
(h) Because the disputed domain name corresponds directly to a service mark used by Clear Channel, it has quickly come to be identified by the relevant public,viz., listeners in the Philadelphia area, as identifying Clear Channelís radio and broadcasting services over WIOQ-FM and the website for that station. Moreover, given the popularity of the Q102 Philly website, it is an asset that has tremendous value to Clear Channel.
(i) The disputed domain name should not be transferred to the Complainant.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <q102.com> transferred to it, Complainant must prove the following (the Policy, para 4(a):
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has provided an exemplary copy of its service mark registration "Q102", no. 1,071,619 first registered on August 16, 1977 on the principal register of the United States Patent and Trademark Office in international class 38 (Complaint Exhibit C). On May 18, 1995, Respondent registered the disputed domain name <q102.com> (Complaint, Exhibit A). It has become axiomatic in Policy proceedings that the top level routing indicator ".com" is not part of the domain name for the purposes of trademark infringement analysis (Digitronics Inventioneering Corporation v. @Six.Net Registered, ICANN/WIPO Case No. D2000-0008, March 1, 2000; Credit Management Solutions, Inc. v. Collex Resource Management, ICANN/WIPO Case No. D2000-0029, March 17, 2000). Thus, the Panel finds Respondentís disputed domain name is identical to Complainantís service mark, and that the Complainant readily satisfies the first (para 4(a)(i)) of the three requirements under the Policy.
Legitimate Rights or Interests
The Complainant has shown that its predecessor-in-interest first registered the service mark Q102 in the United States on August 16, 1977. Complainant further asserts that Respondent has no rights or interests in the disputed domain name. Complainantís main argument in support is that Complainant, not Respondent, owns the radio station WKRQ-FM (101.9) in Cincinnati, Ohio. Clear Channel agrees that although one of its subsidiaries registered the disputed domain name to be used with this same radio station in Cincinnati, Clear Channel's predecessor Jacor was forced by the U.S. FCC and DOJ to give up WKRQ-FM (101.9), which was acquired subsequently by Complainant.
The Policy provides that, once Complainant has made a showing that it has not licensed, or acquiesced in, Respondentís use of its trademark as a domain name, Respondent may affirmatively show that it does have legitimate rights and interests in the disputed domain name (the Policy 4(c)) (NCAA v. Mark Halpern and Front and Center Entertainment, ICANN/WIPO Case No. D2000-0700, December 10, 2000; Toronto Star Newspapers Limited v. Virtual Dates Inc., ICANN/WIPO Case No. D2000-1612, February 6, 2001). The "Respondent" in this case is 102.7 WEBN Radio. No evidence has been presented that would demonstrate that this entity had or has any legitimate interests in the disputed domain name.
Rather than attempt to demonstrate that the Respondent has rights, Clear Channel has attempted to demonstrate that it has rights or legitimate interests because after the U.S. DOJ forced Jacor to give up WKRQ -FM (101.9) in Cincinnati on December 23, 1996, Respondent began using the disputed domain name in an attempt to parody Complainant's WKRQ- FM (101.9) in Cincinnati in 1998; and owners of Respondent later used the disputed domain name in conjunction with radio stations KQXT-FM (KQ102) in San Antonio, Texas in 1999, and WIOQ-FM (Q102 Philly) in Philadelphia, Pennsylvania as of mid-2000. Respondent's current owner, Clear Channel, has produced evidence of the significant popularity of the Philadelphia station WIOQ-FM (Response, Exhibit B).
Even assuming, for purposes of argument, that Clear Channel's rights and interests are relevant, the record shows that Clear Channel's predecessor was required by the DOJ consent judgment of December 31, 1996 to transfer the disputed domain name to Complainant's predecessor at that time (copy of the judgment was included in the documents submitted by both the Complainant and the Respondent on February 9, 2001 in response to Procedural Order No. 1: 1966 U.S. Dist. LEXIS 20199, S.D. Ohio, December 31, 1996).
Registered and Used in Bad Faith
According to Clear Channel, when Respondent registered the disputed domain name <q102.com> on May 18, 1995, its justification was that its then parent (Jacor) contemplated acquiring the Cincinnati radio station WKRQ-FM (101.9). However, based on the documents before the Panel, there was no such acquisition plan in the offing at that time.
Clear Channel has not come close to showing the Panel that the Respondent's registration of the disputed domain name was specifically in contemplation of the acquisition of WKRQ-FM (101.9) in Cincinnati. There is of course the acquisition of this station by
merger on February 12, 1996, but this was some nine (9) months later. Since the Respondent also registered as a domain name <wgrr.com> on July 29, 1995, the name of another one of its direct competitor stations in the Cincinnati area market which its then parent never acquired, the Panel finds the Respondent was making it a practice to register as domain names the names of its competitor stations in the Cincinnati area.
The consent judgment which Clear Channel's predecessor signed with the United States Department of Justice (DOJ)(stipulated September 12, 1996 and entered on December 31, 1996), among other things, required Clear Channel's predecessor to do the following: turn over to the Complainant's predecessors-in-interest, ARS and ARSLC, "all trademarks, service marks, trade names, slogans, programming materials and promotional materials relating to WKRQ." Apparently, at the time, neither the DOJ nor the Complainant was aware of the existence of this particular asset (the disputed domain name). But the Respondent and its parent company certainly were, and in bad faith did not report the domain name as part of the assets to be divested with WKRQ-FM (101.9).
Afterwards, the Respondent and its parent companies tried to contrive uses for the disputed domain name to keep it out of the hands of the Complainant, hence the parody in 1998, the use of the domain name in conjunction with KQXT-FM (KQ102) San Antonio in 1999 and, most recently, the use of the name in conjunction with Clear Channel's radio station WIOQ-FM (Q102 Philly), Philadelphia, Pennsylvania, USA in 2000.
The Panel finds that all the uses of the disputed domain name since December 23, 1996 are tainted by bad faith because the Respondent was well aware that the name should have been transferred in conjunction with the consent judgment divestitures.
The Panel is aware that bad faith use based on violation of a U.S. DOJ consent judgment is not specifically contemplated in the illustrative, but not exhaustive, bad faith provisions of the Policy at 4(b)(i-iv). However, the Rules empower the Panel to draw on other sources of law when the Panel finds it appropriate (Rule 10). As discussed above, in this instance the Panel has found it appropriate to draw on the consent judgement between Clear Channel's predecessor and the U.S. Department of Justice entered on December 31, 1996.
In conclusion, the Panel finds the Respondent registered and is using the disputed domain name in bad faith.
In accordance with ICANN Policy para 4(i) and Rule 15, the Panel orders that the disputed domain name <q102.com> be transferred from the Respondent 102.7WEBNRadio to the Complainant, CBS Radio Inc. The Complainant has demonstrated the domain name is identical to its service mark and that the Respondent has no rights or legitimate interests in the domain name. The Complainant also has demonstrated that the Respondent registered the domain name in bad faith and that the domain name has been used in bad faith in violation of a United States Department of Justice consent judgment.
Dennis A. Foster
M. Scott Donahey
Dated: April 4, 2001