NAF panel favours first to register in POWER 105.1 dispute

In Clear Channel Communications Inc v Emmis Communications, a three-member National Arbitration Forum panel has declined to order the transfer of 'power1051.com'. The panel struggled with the issue of whether Clear Channel had established prior trademark rights in POWER 105.1, but had little difficulty determining that Emmis had not acted in bad faith when registering the domain name.

Both parties operate radio stations in various regions of the United States. Clear Channel started using the mark POWER 105.1 in New York City on billboards, the station's website and other promotion streams in March 2002. It asserted that Emmis was guilty of trademark infringement for its use of the POWER 105.1 mark. Emmis, on the other hand, argued that it had used various POWER marks for years, and had registered the domain name 'power1051.com' before Clear Channel began commercial use of POWER 105.1.

Addressing the Uniform Domain Name Dispute Resolution Policy requirements for transfer or cancellation of a domain name, the panel found that the domain name is identical to a mark in which Clear Channel has rights. However, the panel also found that Emmis has a legitimate interest in the domain name. Emmis claimed to have registered the domain names 'power105.com', 'power1051.com' and 'power1053.com' for listeners of its Los Angeles radio station Power 106 FM, which operates at a frequency of 105.9.

The panel also noted that "[a]bsent some other consideration, such as insider information", registering 'power1051.com' before Clear Channel began commercial use of the mark POWER 105.1 evidenced a lack of bad faith on the part of Emmis.

Based on these findings, the panel concluded that it could not order Emmis to transfer the name to Clear Channel.

This case is an example of a complex trademark dispute which is better suited to a federal court proceeding.

Ron Dreben and Yun Jae Chun, Morgan Lewis & Bockius LLP, Washington DC