Time Warner Inc. v. Zhichao Yang
Claim Number: FA1610001700364
Complainant is Time Warner Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <timewarnerbenfits.com> and <warnerarchieve.com>, registered with Fabulous.Com Pty Ltd and GoDaddy.com, LLC, respectively.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 28, 2016; the Forum received payment on October 28, 2016.
On October 31, 2016, Fabulous.Com Pty Ltd confirmed by e-mail to the Forum that the <timewarnerbenfits.com> domain name is registered with Fabulous.Com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.Com Pty Ltd has verified that Respondent is bound by the Fabulous.Com Pty Ltd 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 November 8, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <warnerarchieve.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 the Policy.
On November 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2016 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@timewarnerbenfits.com, postmaster@warnerarchieve.com. Also on November 9, 2016, 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 December 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant operates in the entertainment industry, and has done so for several years. In furtherance of its business interests, Complainant has registered several marks with the United States Patent and Trademark Office (“USPTO”) including the WARNER BROS mark (Registry No. 1,026,466, registered Dec. 2, 1975) and the TIME WARNER mark (Registry No. 1,816,474, registered Jan. 11, 1994) (collectively the “TW marks”). Respondent’s <timewarnerbenfits.com> and <warnerarchieve.com> domain names are confusingly similar to Complainant’s marks. Specifically, <timewarnerbenfits.com> incorporates the TIME WARNER mark entirely, less the space, and merely adds the (misspelled) term “benfits” and the “.com” generic top-level domain (“gTLD”). Additionally, <warnerarchieve.com> incorporates the WARNER BROS mark, omitting “BROS,” adding the (misspelled) term “archieve” and the “.com” gTLD.[1]
ii) Respondent has no rights or legitimate interests in <timewarnerbenfits.com> and <warnerarchieve.com>. Respondent is not licensed or authorized to use Complainant’s marks and is not otherwise commonly known by <timewarnerbenfits.com> and <warnerarchieve.com>. Further, Respondent uses the domain names to redirect Internet users to myriad websites that engage in the following uses: (i) inviting Internet users to complete a survey in a fraudulent scheme to phish for Internet users’ personal information, (ii) resolving to adult-oriented content, or (iii) resolving to landing pages that display sponsored links related to Complainant’s products and services. None of the foregoing uses evince a bona fide offering of goods or services or any legitimate noncommercial or fair use.
iii) Respondent registered and used <timewarnerbenfits.com> and <warnerarchieve.com> in bad faith. Respondent is a serial cybersquatter with a history of UDRP decisions finding Respondent to have registered domain names in bad faith—evincing a pattern pursuant to Policy ¶ 4(b)(ii). Further, Respondent’s promotion of adult-oriented content and inclusion of “sponsored links” indicates Policy ¶ 4(b)(iv) bad faith. Respondent’s inclusion of a survey that invites Internet users to take it for a chance to win a “$1000 Amazon Gift card or $1000 Visa Gift card” imputes an attempt to phish for personal information, which is nonexclusive evidence of bad faith under Policy ¶ 4(a) (iii). Additionally, while the domain names are mere typos of Complainant’s <timewarnerbenefits.com> and <warnerarchive.com>,[2] Respondent intentionally registered <timewarnerbenfits.com> and <warnerarchieve.com> with actual and/or constructive knowledge of the TW marks and Complainant’s rights.
B. Respondent
Respondent did not submit a Response in this proceeding. The Panel notes that <timewarnerbenfits.com> and <warnerarchieve.com> were registered on November 8, 2015 and December 20, 2012, respectively.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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 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 (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.”).
Complainant operates in the entertainment industry, and has done so for several years. In furtherance of its business interests, Complainant claims it has registered several marks with the USPTO including the WARNER BROS mark (Registry No. 1,026,466, registered Dec. 2, 1975) and the TIME WARNER mark (Registry No. 1,816,474, registered Jan. 11, 1994). Panels have considered USPTO registrations as prima facie evidence of rights under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel agrees that Complainant has sufficiently demonstrated its rights in both the WARNER BROS and TIME WARNER marks under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <timewarnerbenfits.com> and <warnerarchieve.com> are confusingly similar to Complainant’s marks. Specifically, <timewarnerbenfits.com> incorporates the TIME WARNER mark entirely, less the space, and merely adds the (misspelled) term “benfits” and the “.com” gTLD. Additionally, <warnerarchieve.com> incorporates the WARNER BROS mark, omitting the space and “BROS,” adding the (misspelled) term “archieve” and the “.com” gTLD. Omission of spacing and adding a gTLD is irrelevant. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Removing a term of a mark may be considered inconsequential as well. Cf. VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).). Further, adding generic or descriptive terms has also failed in distinguishing a domain name from a mark. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The Panel agrees that <timewarnerbenfits.com> and <warnerarchieve.com> are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant contends that Respondent has no rights or legitimate interests in <timewarnerbenfits.com> and <warnerarchieve.com>. Respondent is not licensed or authorized to use Complainant’s marks and is not otherwise commonly known by <timewarnerbenfits.com> and <warnerarchieve.com>. Where a response is not present, WHOIS information is considered relevant evidence under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). While the WHOIS here lists “Zhichao Yang” as registrant of record, the Panel agrees that there is no basis to find Respondent commonly known by either domain name.
Further, Complainant contends that Respondent uses the domain names to redirect Internet users to myriad websites that engage in the following uses: (i) inviting Internet users to complete a survey in a fraudulent scheme to phish for Internet users’ personal information, (ii) resolving to adult-oriented content, or (iii) resolving to landing pages that display sponsored links related to Complainant’s products and services. The Panel notes the following precedent wherein such uses were considered:
(i) Using a domain name for survey or a phishing scam does not constitute a bona fide offering or a legitimate noncommercial or fair use. See Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to 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)). Similarly, Respondent offers Amazon or Visa gift cards for completing the survey located on one of the resolving pages. Complainant’s exhibit displays the statement on one of the resolving pages “Please complete this short survey and to say ‘Thank You’ we’ll give you a chance to get a $1000 Amazon Gift card or a $1000 Visa Giftcard!”. Therefore, the Panel finds in accordance with Homer TLC, Inc.—that Respondent has failed to provide any bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) through its use of surveys.
(ii) Adult-oriented content fails to constitute a bona fide offering or a legitimate noncommercial or fair use. See, generally, Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited-, FA 1603444 (Forum Mar. 19, 2015) (holding that, generally, a disputed domain which hosts adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Respondent has included explicit content on one of the resolving websites. Therefore, the Panel agrees that Respondent’s inclusion of adult-oriented content fails to evince any rights or legitimate interests.
(iii) Including hyperlinks to a complainant’s products and services, or competing services, does not amount to a bona fide offering or a legitimate noncommercial or fair use. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Accordingly, while Respondent has included links to Complainant’s website and competing websites, the Panel agrees that Respondent has not demonstrated any bona fide offering or a legitimate noncommercial or fair use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <timewarnerbenfits.com> and <warnerarchieve.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 12, 2016
[1] The disputed domain names are merely “typos” of Complainant’s official employee benefits website at <timewarnerbenefits.com> and entertainment archive website found at <warnerarchive.com>. This argument is not applicable under Policy ¶ 4(a)(i) and will therefore arise under bad faith, infra.
[2] See supra, note 1.
[3] See supra, note 1.
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