Time Warner Inc. v. David Rahmany / Dme
Claim Number: FA1506001622087
Complainant is Time Warner Inc. (“Complainant”), represented by Alexander J.A. Garcia of Perkins Coie LLP, Washington, USA. Respondent is David Rahmany / Dme (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <timewarner.systems>, <timewarner.technology>, and <timewarnercable.technology>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2015; the Forum received payment on June 1, 2015.
On June 2, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <timewarner.systems>, <timewarner.technology>, and <timewarnercable.technology> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2015 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@timewarner.systems, postmaster@timewarner.technology, postmaster@timewarnercable.technology. Also on June 3, 2015, 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.
A timely Response was received and determined to be complete on June 3, 2015.
On June 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luiz Edgard Montaury Pimenta 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the TIME WARNER and TIME WARNER CABLE marks via its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. Nos. 1,816,474 and 3,352,095, registered on January 11, 1994 and December 11, 2007, respectively).
Respondent’s <timewarner.systems>, <timewarner.technology>, and <timewarnercable.technology> domain names are effectively identical to Complainant’s marks as they incorporate the marks entirely, while merely eliminating spacing between words and adding the “.systems” and “.technology” generic top-level domains (“gTLDs”).
Respondent has no rights or legitimate interests in the <timewarner.systems>, <timewarner.technology>, and <timewarnercable.technology> domain names.
Respondent is not a licensee of Complainant, nor is it commonly known by the disputed domain names.
Respondent’s websites currently resolve to inactive pages displaying the message, “Website coming soon! Please check back soon to see if the site is available.”
Also, at Complainant’s Attached Exhibit F is evidence of Respondent’s attempt to sell each disputed domain names for $18,000.00 each. Such use constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Respondent has registered and used the <timewarner.systems>, <timewarner.technology>, and <timewarnercable.technology> domain names in bad faith. Respondent has offered to sell each domain name to Respondent in excess of out-of-pocket costs, demonstrating bad faith under Policy ¶ 4(b)(i). While the websites resolve to inactively held pages, Respondent has demonstrated its bad faith under Policy ¶ 4(a)(iii). Further under Policy ¶ 4(a)(iii), prior to registering and using the disputed domain names, Respondent had actual knowledge of the TIME WARNER and TIME WARNER CABLE marks.
B. Respondent
In response to the Complainant’s allegation, the Respondent requests the Panel to deny the remedy sought by the Complainant, basically alleging that:
Complainant has no trademark registration for the TIMEWARNER.COM, TIMEWARNER TECHNOLOGY, TIME WARNER SYSTEMS, TIME WARNER CABLE TECHNOLOGY, TIMEWARNER.TECHNOLOGY, TIMEWARNER.SYSTEMS, or TIMEWARNERCABLE.TECHNOLOGY. Therefore, Complainant has failed to satisfy Policy ¶ 4(a)(i) burden.
Complainant, a global leader in media and entertainment with businesses in television networks and film and TV entertainment, owns the TIME WARNER and TIME WARNER CABLE marks via its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. Nos. 1,816,474 and 3,352,095, registered on January 11, 1994 and December 11, 2007, respectively).
Respondent registered the disputed domain names on January 26, 2015.
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.
The Panel notes that Complainant owns the TIME WARNER and TIME WARNER CABLE marks via its registrations with the USPTO (e.g., Reg. Nos. 1,816,474 and 3,352,095, registered on January 11, 1994 and December 11, 2007, respectively).
The Panel finds that Respondent’s <timewarner.systems>, <timewarner.technology>, and <timewarnercable.technology> domain names are effectively identical to Complainant’s marks as they incorporate the marks entirely, while merely eliminating spacing between words and adding the “.systems” and “.technology” gTLDs.
Therefore, this Panel finds confusing similarity between the <timewarner.systems>, <timewarner.technology>, and <timewarnercable.technology> domain names and the TIME WARNER and TIME WARNER CABLE marks under Policy ¶ 4(a)(i).
It is well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
In the present case, the Panel finds that Respondent is not a licensee of Complainant, nor is it commonly known by the disputed domain names. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Panel notes that Respondent’s websites under the disputed domain names seem to currently resolve to inactive pages displaying the message “Website coming soon! Please check back soon to see if the site is available.”
Considering the circumstances of the present case, the Panel concludes that the failure to make an active use of the disputed domain names that are identical to Complainant’s marks is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Therefore, this Panel finds that Respondent has not demonstrated rights or legitimate interests in the <timewarner.systems>, <timewarner.technology>, and <timewarnercable.technology> domain names by not making any bona fide offering of goods or services (Policy ¶ 4(c)(i)) or any legitimate noncommercial or fair use (Policy ¶ 4(c)(iii)).
Moreover, based on the evidences in the record, the Panel finds that Respondent offered to sell each disputed domain name to Complainant for $18,000.00.
Accordingly, the Panel finds no rights or legitimate interests under Policy ¶ 4(a)(ii) because it seems Respondent registered the disputed domain names for the sole purpose of extorting a great deal of money from Complainant.
The Panel notes that Respondent has offered to sell each domain name to Respondent in excess of out-of-pocket costs, which, along with other evidences in the record, can lead to a find of bad faith under Policy ¶ 4(b)(i). In Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002), the panel stated, “[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website.”
In the present case, contrary to Respondent’s assertion that it should be compensated for “Research, Domain search, Consulting, Registration, Processing, Handling, Paperwork, Time, and Godaddy fees”, the Panel finds that Respondent was only entitled to costs related to the domain name, and not those related to all the mentioned services.
The Panel agrees that Respondent has inactively held the disputed domain names in bad faith under a non-exclusivity analysis of Policy ¶ 4(a)(iii).
This Panel accordingly finds, for all the foregoing reasons, that the disputed domain names have been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <timewarner.systems>, <timewarner.technology>, and <timewarnercable.technology> domain names be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: June 26, 2015
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