Clear Channel Outdoor Holdings, Inc. and Clear Channel IP, LLC v Host

WIPO Case No. D2023-3042

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Clear Channel Outdoor Holdings, Inc. and Clear Channel IP, LLC v. Host
Master, Transure Enterprise Ltd

Case No. D2023-3042

1. The Parties

Complainants are Clear Channel Outdoor Holdings, Inc. and Clear Channel IP, LLC, United States of

America (U.S.A.), represented by Schwegman Lundberg & Woessner, P.A., U.S.A.

Respondent is Host Master, Transure Enterprise Ltd, U.S.A.

2. The Domain Name and Registrar

The disputed domain name <clearchanneloutdoors.com> (the “Domain Name”) is registered with

Above.com, Pty. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2023. On July 17, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 21, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent (Unknown Registrant) and contact information in the Complaint. The Center sent an email communication to Complainants on August 2, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on August 7, 2023.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 9, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 1, 2023.

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The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 12, 2023.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

Clear Channel IP, LLC (“CCIP”), headquartered in New York City, is a wholly owned subsidiary of Clear Channel Outdoor Holdings, Inc. (“CCOH”), an international outdoor advertising company with over 450,000 displays located in 31 countries across Asia, Europe, Latin America, and North America. CCOH helps advertisers create out-of-home advertising campaigns using traditional and digital display formats in various environments (roadside, urban, transportation), on street furniture and near point of sale for retail purposes.

CCIP owns several trademark registrations in the U.S.A. and internationally for the mark CLEAR CHANNEL
OUTDOOR such as: U.S.A. Registration No. 2807051 (registered on January 20, 2004) (the “CLEAR
CHANNEL OUTDOOR Mark” or the “Mark”). Complainants first adopted and used the CLEAR CHANNEL
OUTDOOR Mark in connection with its out-of-home advertising services in 2001.

Complainants have also developed a significant presence on the Internet and CCIP owns numerous domain names that contain "CLEAR CHANNEL OUTDOOR," including, <clearchanneloutdoor.com>; <clearchannel- outdoor.com>; <clearchanneloutdoor.biz>; <clearchanneloutdoor.ca>; <clearchanneloutdoor.co.uk>;

<clearchanneloutdoor.info>; <clearchanneloutdoor.eu>; <clearchanneloutdoor.ro>;
<clearchanneloutdoor.ro>; <clearchanneloutdoor.se>; and <clearchanneloutdoor.us>.

The Domain Name was registered on June 8, 2023, 22 years after Complainants first adopted and used their CLEAR CHANNEL OUTDOOR Mark and registered their domain name <clearchanneloutdoor.com> in 2001. The Domain Name is currently used in a fraudulent computer scam.

5. Parties’ Contentions

A. Complainants

The Domain Name is nearly identical with and confusingly similar to the CLEAR CHANNEL OUTDOOR Mark. It incorporates the Mark in its entirety. The addition of “s” to Complainants’ well-known Mark is insufficient to distinguish or differentiate the Domain Name from the Mark. It is an instance of typo squatting of the letters. The additional “s” takes advantage of users’ misspellings and typographical errors and is likely to result in confusion. Additionally, the Domain Name is nearly identical with Complainants’ domain name <clearchanneloutdoor.com>. As a result, when the Domain Name is used, the public is likely to believe that there is some connection, sponsorship, affiliation, or association between the Domain Name and the Mark.

The Domain Name directs to a website that deploys a computer scam. There is no evidence of
Respondent’s use of, or preparations to use, the Domain Name in connection with a bona fide offering of
goods or services. Furthermore, Respondent is not making a legitimate non-commercial or fair
use of the Domain Name. Rather, Respondent uses it to link to a site containing a hacking scam that
attempts to gain unauthorized access to the user’s device and personal information by impersonating
Microsoft.

Complainants have given Respondent no authorization or license to use the Mark and there exists no connection between them. There is no evidence that Respondent has been commonly known by the Domain Name or has any trademark or service mark rights to it. In contrast, Complainants have developed

significant trademark rights to CLEAR CHANNEL OUTDOOR over the past 22 years. The website
connected to the Domain Name operates a computer hacking scam without any justification for using or
connection with the CLEAR CHANNEL OUTDOOR Mark.

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The Domain Name was registered on June 8, 2023, 22 years after Complainants first adopted and used their
CLEAR CHANNEL OUTDOOR Mark in 2001 and 22 years since Complainants registered their nearly
identical domain name <clearchanneloutdoor.com> on May 23, 2001. Therefore, Respondent registered the
Domain Name with prior knowledge of the Mark. Respondent has no authority to apply for and use the
Domain Name and in doing so claimed a connection with Complainants.

Respondent has also used a privacy service to register the Domain Name. It is not being used for any genuine activities, considering the fact that Respondent uses it to operate a computer phishing scam.

Respondent acquired the Domain Name solely for the purpose of commercial gain by misleadingly capturing consumers of the CLEAR CHANNEL OUTDOOR Mark and diverting unsuspecting consumers of Complainants’ services to Respondent’s computer hacking site. Using a domain name for per se illegitimate activity such as phishing and hacking can never confer rights or legitimate interests on a respondent and such behavior is manifestly considered evidence of bad faith. Moreover, use of the Domain Name to perpetuate a fraud by impersonating Microsoft and administering a hacking scheme is further bad faith.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainants have rights in the CLEAR CHANNEL OUTDOOR Mark by virtue of the aforementioned U.S.A. trademark registration for that Mark.

The Domain Name <clearchanneloutdoors.com> is confusingly similar to Complainants’ CLEAR CHANNEL OUTDOOR Mark because: Complainants’ Mark is clearly recognizable within the Domain Name; the Top- Level Domain is generally not determinative in establishing whether the Domain Name is confusingly similar to a complainant’s mark; and adding “s” does not prevent a finding of confusing similarity to Complainants’ Mark. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed
domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or

otherwise) would not prevent a finding of confusing similarity under the first element.”).

For the foregoing reasons, the Panel concludes that Complainants have satisfied paragraph 4(a)(i) of the

Policy.

B. Rights or Legitimate Interests

Complainants contend that Respondent has no rights or legitimate interests in the Domain Name because: (1) Complainants have not authorized or licensed Respondent to use the Mark for any purpose and there is no connection between the parties; (2) Complainants have found no evidence that Respondent has been

commonly known by the Domain Name; (3) Complainants have found nothing to suggest that Respondent
holds any trademark or service mark rights in the Domain Name.

Also, there is no evidence that Respondent is using or preparing to use the Domain Name in connection with a bona fide offering of goods or services insofar as the Domain Name reverts to a website that deploys a computer scam. Similarly, Respondent is not making a legitimate non-commercial or fair use of the Domain Name because it links to a site containing a hacking scam that attempts to gain unauthorized access to the user’s device and personal information by impersonating Microsoft. Use of a domain name for illegal activity, i.e., phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or

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other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0
section 2.13; see also, Fox Media LLC v. Bill Biersdorf, Case No. D2022-4600.

Where, as here, Complainants have raised a prima facie presumption of Respondent’s lack of any rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainants have carried their burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent registered the Domain Name on June 8, 2023, 22 years after Complainants began using the Mark and many years after Complainants obtained the aforementioned trademark registration for it in 2004. It is further undisputed that: (1) the Domain Name not only reproduces in full the CLEAR CHANNEL OUTDOOR Mark, Respondent simply added an “s” to Complainants’ Mark and Complainants’ domain name under which Complainants have an established on-line presence; and (2) Respondent has no rights or legitimate interest in the Domain Name. Given this undisputed evidence, the Panel finds it is more likely than not Respondent was aware of Complainants and the CLEAR CHANNEL OUTDOOR Mark when it registered the Domain Name and decided to use it for a fraudulent scam.

The Domain Name does not resolve to an active website rather, unsuspecting Internet users who mistype user into providing confidential information. In encountering the site, there are flashing boxes warning, among other things: “MS WINDOWS DEFENDER – Warning Alert System” “Your System has alerted us that it has been infected with Spyware Issues. The following data has been Breached. >Email Passwords >Banking Passwords > Facebook Login . . . “ “Access has been blocked for security reasons and for Safety. Call Windows Security Toll Free: . . . “
Complainants’ Mark or domain name will be diverted from Complainants’ commercial website to

Such improper use of a domain name in connection with a phishing attempt is paradigmatic evidence of bad faith. National Westminster Bank plc. V. Sites/Michael Vetter, WIPO Case No. D2013-0870 (holding phishing constitutes bad faith use). Moreover, use of the Domain Name to perpetuate a fraud by impersonating Microsoft and administering a hacking scheme, amounts to use in bad faith for purposes of paragraph 4(b) of the Policy. Fox Media LLC v. Bill Biersdorf, Case No. D2022-4600.

For the foregoing reasons, the Panel finds that Complainants have satisfied the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <clearchanneloutdoors.com> be transferred to Complainants.

/Harrie R. Samaras/
Harrie R. Samaras
Sole Panelist
Date: September 26, 2023