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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

WNYC RADIO v. Mike Morgan

Case No. D2006-1285

 

1. The Parties

The Complainant is WNYC RADIO, New York, NewYork, United States of America, represented by Lackenbach Siegel LLP, United States of America.

The Respondent is Mike Morgan, Mt. Pearl, Newfoundland, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <wync.org>is registered with BB Online UK Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2006. On October 6, 2006, the Center transmitted by email to BB Online UK Ltd. a request for registrar verification in connection with the domain name at issue. On October 11, 2006, BB Online UK Ltd. 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 October 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2006.

The Center appointed Desmond J. Ryan as the sole panelist in this matter on November 20, 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 is an internationally well-known “public” radio station which was formerly owned by the City of New York. It is one of the oldest radio stations in the United States of America, and possibly the world, and it commenced operation on the AM spectrum in 1922 and on the FM spectrum in 1943. It is currently available also via satellite and some of its programs are available via pod casts. These include two of its popular programs “The Leonard Lopate Show” and “The Brian Lehrer Show”. Complainant is the owner of several US trademarks registered on the principal register and which consist of or include the letters WNYC (Complaint Exhibit 4). Complainant uses the letters WNYC not only as its call sign but also as a trademark in respect of a range of goods and services which it offers collaterally to its broadcasting activity.

Respondent has not filed a response. Nothing is known of the Respondent or his activities save for the information provided by Complainant referred to below.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that the Respondent has no connection or affiliation with it and has no rights by contract, license, assignment or otherwise to use Complainants WNYC trademark.

Respondent’s website is a generic search portal site containing links to a variety of sites offering goods and services such as travel and accommodation, finance, real estate, business, entertainment, dating and chat programs. Included among the links are links to Complainant’s “Brian Lehrer Show” and “Leonard Lopate Show”, to “Wnyc Fm” and to “Podcasts” (Complaint Exhibit 6). Complainant asserts that it has not authorized Respondent to display any links to its programs. Complainant points to the fact that the domain name consists of the letters of its WNYC call sign and trademark with the letters Y and N transposed to create a letter string which is easily confused with its well-known WNYC mark. Complainant contents that this amounts to “typosquatting” and cites some of the many cases in which this practice has been held to be likely to cause confusion – Victoria’s Secret et al v. John Zuccarini dba as Cupcake Patrol, Cup Cake Party and Country Walk NAF Case FA0010000095762, NM Nevada Trust, The Neiman Marcus Group, Inc. and Bergdof Goodman, Inc v. Sean Nassy, NAF Case FA0202000104203.

Complainant states on information and belief that Respondent makes money by creating “click through” traffic to the third party sites linked to its site at the domain name.

Complainant therefore contends that:

- its WNYC trademark is well-known and it has well established rights in that mark both at common law and by virtue of its trademark registrations;

- Respondent can have no right or legitimate interest in the domain name;

- it is inconceivable that Respondent was unaware of Complainant’s rights in its WNYC marks and that the provision of links to Complainants own program sites such as “Brian Lehrer Show” and “Leonard Lopate” clearly demonstrate Respondent’s awareness of Complainant and its mark. Respondent has deliberately attempted, for commercial gain, to create confusion with Complainant’s mark. Bad faith must be inferred from Respondent’s deliberate misspelling of Complainant’s mark and the attempt to derive commercial gain from the confusion thereby created. Complainant cites prior panel decisions in Google Inc v. Namerental.com Leonard Bensonoff, WIPO Case No. D2001-0060 and Pfizer Inc v. Enamecorp.com WIPO Case No. D2001-0791.

B. Respondent

The Respondent did not respond to the Complaint. Complainant’s statement of facts therefore stands uncontroverted and is, in any event, well supported by the documentary evidence provided in the exhibits to the Complaint.

 

6. Discussion and Findings

In order to succeed in its Complaint, Complainant must show each of the following circumstances:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name is not identical to Complainant’s mark. It differs from it by the transposition of the letters N and Y. This transposition however is not sufficient to avoid the likelihood of confusion between the domain name and Complainant’s mark. Such confusion may arise in a number of ways. First of all, the letter strings WNYC and WYNC can easily be confused visually. Secondly, mistyping can easily lead to a transposition of the letters, and thirdly, an imperfect recollection of Complainant’s mark and call sign can itself lead to confusion. Whilst it might be argued that persons in North America are likely to be so familiar with the abbreviation NYC that such confusion would not be likely, the evidence indicates that Complainant and the programs which it produces are well-known outside the United States of America where instant familiarity with the letters NYC cannot be assumed.

Complainant’s evidence clearly shows that Complainant has established both common law and statutory rights in its trademark.

The Panel therefore finds that the domain name is confusingly similar to a trademark in which Complainant has rights.

B. Rights or Legitimate Interests

There is nothing on the face of this case to suggest that Respondent, whose name is Mike Morgan, should have any rights or legitimate interest in the word or letter string WYNC. Respondent had the opportunity to provide evidence of its right or interest but did not do so. Complainant’s evidence and assertions therefore remain uncontroverted. There is nothing upon which the Panel could find a right or interest in the domain name in the Respondent.

The Panel therefore finds that Respondent has no rights or legitimate interest in the domain name.

C. Registered and Used in Bad Faith

The Panel accepts Complainant’s contention that Respondent has registered and is using the domain name to attract Internet users to its website for commercial gain and that it has intentionally attempted to do so by creating a likelihood of confusion with Complainant’s mark. The fact that some of the links on Respondent’s homepage point to Complainant’s genuine programs adds to, rather than detracts from, the likelihood of confusion. This is not a case where momentary confusion will be dispelled by the site once the link is established. The fact that some of the links to the site are to Complainant’s own program sites will tend to perpetuate a user’s belief that Complainant’s site has been correctly accessed.

The Panel therefore finds that Respondent registered and is using the domain name 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 <wync.org> be transferred to the Complainant.

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Desmond J. Ryan
Sole Panelist

Dated: December 4, 2006