Time Warner Inc. v. MLM Capital LLC d/b/a Domains
Claim Number: FA0709001076561
Complainant is Time Warner Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, 1050 Connecticut Avenue, NW, Washington, DC, 20036. Respondent is MLM Capital LLC d/b/a Domains (“Respondent”), Nashville, TN, 37203.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are: <timewarnerfamily.com>, <timewarnerfilms.com>, <timewarnermedia.com>, <timewarnernetwork.com>, <timewarnernetworks.com>, and <twpublishing.com>, registered with Aaaq.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 12, 2007; the National Arbitration Forum received a hard copy of the Complaint September 13, 2007.
On September 13, 2007, Aaaq.com confirmed by e-mail to the National Arbitration Forum that the <timewarnerfamily.com>, <timewarnerfilms.com>, <timewarnermedia.com>, <timewarnernetwork.com>, <timewarnernetworks.com>, and <twpublishing.com> domain names are registered with Aaaq.com and that Respondent is the current registrant of the names. Aaaq.com verified that Respondent is bound by the Aaaq.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 9, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@timewarnerfamily.com, postmaster@timewarnerfilms.com, postmaster@timewarnermedia.com, postmaster@timewarnernetwork.com, postmaster@timewarnernetworks.com, and postmaster@twpublishing.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <timewarnerfamily.com>, <timewarnerfilms.com>, <timewarnermedia.com>, <timewarnernetwork.com>, <timewarnernetworks.com>, and <twpublishing.com>, are confusingly similar to Complainant’s TIME WARNER mark.
2. Respondent does not have any rights or legitimate interests in the <timewarnerfamily.com>, <timewarnerfilms.com>, <timewarnermedia.com>, <timewarnernetwork.com>, <timewarnernetworks.com>, and <twpublishing.com> domain names.
3. Respondent registered and used the <timewarnerfamily.com>, <timewarnerfilms.com>, <timewarnermedia.com>, <timewarnernetwork.com>, <timewarnernetworks.com>, and <twpublishing.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Time Warner Inc., is a leading media and entertainment company, whose businesses include interactive services, cable systems, filmed entertainment, television networks and publishing. Complainant registered the TIME WARNER mark with the United States Patent and Trademark Office (“USPTO”) on January 11, 1994 (Reg. No. 1,816,474); the TIME WARNER AUDIO BOOKS mark on October 31, 1995 (Reg. No. 1,931,702); the TIME WARNER CABLE PAYXPRESS mark on July 25, 2000 (Reg. No. 2,370,458); the TIME WARNER CENTER mark on July 19, 2005 (Reg. No. 2,971,049); the TIME WARNER AUDIOBOOKS mark on June 12, 2007 (Reg. No. 3,250,715); and the TW TELECOM mark on November 29, 2005 (Reg. No. 3,021,423).
Respondent registered the <timewarnerfilms.com>, <timewarnernetwork.com>, <timewarnernetworks.com>, and <twpublishing.com> domain names December 10, 2005; the <timewarnermedia.com> domain name December 11, 2005; and the <timewarnerfamily.com> domain name December 16, 2005. Respondent is using the disputed domain names to redirect Internet users to a website advertising adult-oriented content and other material unrelated to Complainant’s business. Respondent is also generally offering the disputed domain names for sale.
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."
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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant registered the TIME WARNER marks with the USPTO,
and thus has established rights to the marks pursuant to Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s disputed domain names are confusingly similar to Complainant’s registered marks pursuant to Policy ¶ 4(a)(i). The inclusion of generic terms following Complainant’s TIME WARNER mark insufficiently distinguishes the disputed domain names from Complainant’s mark, and the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant under the Policy. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent has no rights to or legitimate interests in the disputed domain names. Complainant must establish a prima facie case, meeting the initial burden of proof that Respondent lacks rights and legitimate interests in the disputed domain names. Once a prima facie case has been established, the burden shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant made a prima facie showing that Respondent lacks rights and legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel presumes that Respondent lacks rights and legitimate interests in the disputed domain names based on Respondent’s failure to answer the Complaint. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel examines the record to see if Respondent has any rights under Policy ¶ 4(c).
Respondent is using the disputed domain names to redirect Internet users to a website advertising adult-oriented content and other material unrelated to Complainant’s business. Previous panels have found that such a use does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Sony Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services and links to adult orientated websites was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii)); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website that featured numerous pop-up advertisements for commercial goods and sexually explicit websites). Therefore, the Panel concludes that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has alleged that Respondent is not commonly
known by the disputed domain names. The
WHOIS information identifies Respondent as “MLM
Capital LLC d/b/a Domains,” and Complainant asserted that Respondent is not
licensed or authorized to use the TIME WARNER marks. The Panel can find no other information in
the record that might indicate that Respondent is commonly known by the
disputed domain names. Therefore, the
Panel concludes that Respondent is not commonly known by the disputed domain
names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July
7, 2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometers.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
Respondent is also generally offering the disputed domain names for sale. The Panel finds this to be further evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is generally offering the disputed domain names
for sale. Therefore, the Panel finds
that Respondent registered and is using the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(i). See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain
name, even if no certain price is demanded, are evidence of bad faith”).
Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website that resolves from the disputed domain names. Respondent likely receives click-through fees for each redirected Internet user, and is therefore attempting to profit from the goodwill associated with Complainant’s TIME WARNER marks. The Panel therefore finds that Respondent’s use of the disputed domain names to advertise adult-oriented content and other material constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel finds that Complainant satisfied 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 <timewarnerfamily.com>, <timewarnerfilms.com>, <timewarnermedia.com>, <timewarnernetwork.com>, <timewarnernetworks.com>, and <twpublishing.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 26, 2007.
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