Warner Bros. Entertainment Inc. v. Not Telling
Claim Number: FA2107001956520
Complainant is Warner Bros. Entertainment Inc. (“Complainant”), represented by Erin S. Hennessy, New York, USA. Respondent is Not Telling (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tmzofficial.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 24, 2021; the Forum received payment on July 24, 2021.
On July 24, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <tmzofficial.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@tmzofficial.com. Also on July 30, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a fully integrated, broad-based entertainment company and a global leader in the creation, production, distribution, licensing, and marketing of all forms of entertainment and related business.
Complainant has rights in the TMZ mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) as well as other national registration worldwide.
Respondent’s <tmzofficial.com> domain name is confusingly similar to Complainant’s TMZ mark. Respondent incorporates the mark in its entirety and adds the term “official” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <tmzofficial.com> domain name as Respondent is not commonly known by the at-issue domain name, nor did Respondent authorize Respondent to use the mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant by using the TMZ mark and confusing internet users, and uses the domain name to facilitate phishing.
Respondent registered and used the <tmzofficial.com> domain name in bad faith as Respondent attempts to pass off as Complainant in order to create consumer confusion and phish for private information. Respondent had actual knowledge of Complainant’s rights in the TMZ mark due to the longstanding use and fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TMZ mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the TMZ trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the TMZ mark with the USPTO demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i), as do any of Complainant’s other registrations of TMZ with national registrars worldwide. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <tmzofficial.com> domain name consists of Complainant’s TMZ trademark followed by the generic term “official,” with all followed by the top-level domain name “.com.” Under the Policy, the differences between Respondent’s domain name and Complainant’s trademark do nothing to distinguish the domain name from the mark. Therefore, the Panel concludes that Respondent’s <tmzofficial.com> domain name is confusingly similar to Complainant’s TMZ trademark pursuant to Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”), see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for <tmzofficial.com> indicates that “Not Telling” is the domain name’s registrant. There is nothing in the record before the Panel that indicates that Respondent is otherwise known by the <tmzofficial.com> domain name. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the at-issue domain name to pass itself off as Complainant. The at-issue domain name addresses a website that shows Complainant’s TMZ mark along with articles and links that relate to Complainant’s business. The website is adorned with Complainant’s trade dress and at glance appears to be a genuine TMZ website. Respondent’s use of <tmzofficial.com> in this manner not indicative of a bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”), see also Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”).
Furthermore, Respondent’s <tmzofficial.com> website allows for users to leave comments. To do so, Respondent requires posters to provide their names and addresses. Respondent thus fraudulently gains access to what is otherwise the personal and private information of third-parties. See, Birdies, Inc. v. Registration Private, Domains By Proxy, LLC / Fu Li, D2019-2134 (WIPO Oct. 18, 2019) (“Noting that the Respondent has misappropriated copyrighted images from the Complainant’s website . . . the Panel infers that . . .Respondent’s website is aimed at misleading consumers. Such use of the Complainant’s trademarks and content from the Complainant’s official website creates an appreciable risk that consumers will be misled into disclosing personal . . . details while under a misleading impression that they are at the Complainant’s website. The Respondent’s use of the disputed domain name therefore does not support a finding of rights or legitimate interests in the disputed domain name on the part of the Respondent”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <tmzofficial.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as discussed above regarding rights and legitimate interests, Respondent’s uses the at-issue domain name to pass itself off as Complainant. Doing so creates consumer confusion and show Respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”), see also BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain), see also Bittrex, Inc. v. Anton Strigin, FA1804001782846 (Forum May 24, 2018) (finding respondent’s use of the domain <bittrexbot.com> in connection with its sale of a cryptocurrency trading bot which disrupted complainant’s business was evidence of bad faith registration and use under Policy ¶ 4(b)(iii)).
Next and as also discussed above regarding rights and legitimate interests, Respondent uses the domain name to phish for certain personal information. Respondent’s phishing scheme further indicates bad faith registration and use of the <tmzofficial.com> domain name. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Moreover, the Panel finds that Respondent registered its <tmzofficial.com> domain name knowing that Complainant had trademark rights in TMZ. Respondent’s prior knowledge is evident from the notoriety of Complainant’s TMZ trademark and from Respondent’s display of Complainant’s TMZ trademark as well as related items on Respondent’s sham <tmzofficial.com> website. Respondent’s prior knowledge of Complainant's trademark further demonstrates that Respondent registered and used its <tmzofficial.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tmzofficial.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 23, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page