Time Warner Inc. v. Lu Zhen
Claim Number: FA1701001712489
Complainant is Time Warner Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Lu Zhen (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <timewarner.click> ,<timewarner.photo>, <timewarner.red>, <timewarner.link>, <timewarner.work>, <timewarnerchina.site>, and <timewarnerasia.site>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 13, 2017; the Forum received payment on January 13, 2017. The Complaint was submitted in both Chinese and English.
On January 18, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <timewarner.click> ,<timewarner.photo>, <timewarner.red>, <timewarner.link>, <timewarner.work>, <timewarnerchina.site>, and <timewarnerasia.site> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 January 24, 2017, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2017 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.click, postmaster@timewarner.photo, postmaster@timewarner.red, postmaster@timewarner.link, postmaster@timewarner.work, postmaster@timewarnerchina.site, postmaster@timewarnerasia.site. Also on January 24, 2017, 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 February 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <timewarner.click> ,<timewarner.photo>, <timewarner.red>, <timewarner.link>, <timewarner.work>, <timewarnerchina.site>, and <timewarnerasia.site> domain names are confusingly similar to Complainant’s TIME WARNER mark.
2. Respondent does not have any rights or legitimate interests in the <timewarner.click> ,<timewarner.photo>, <timewarner.red>, <timewarner.link>, <timewarner.work>, <timewarnerchina.site>, and <timewarnerasia.site> domain names.
3. Respondent registered and uses the <timewarner.click> ,<timewarner.photo>, <timewarner.red>, <timewarner.link>, <timewarner.work>, <timewarnerchina.site>, and <timewarnerasia.site> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the TIME WARNER mark in conjunction with its worldwide entertainment business. Complainant has registered the TIME WARNER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,816,474, registered on Jan. 11, 1994), and with the State Administration for Industry & Commerce of the People’s Republic of China (“SAIC”) (e.g., Reg. No. 1121959, registered Oct. 21, 1997).
Respondent registered the <timewarnerchina.site> and <timewarnerasia.site> domain names on April 20, 2016; the <timewarner.click>, <timewarner.photo>, <timewarner.red>, and <timewarner.link> domain names on June 29, 2016; and the <timewarner.work> domain name on July 27, 2016, and has not made an active use of any of the domain names.
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.”).
The Panel finds that Complainant’s registrations for its TIME WARNER mark with the USPTO and with SAIC establish rights under Policy ¶ 4(a)(i). See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).
Respondent’s <timewarner.click>, <timewarner.photo>, <timewarner.red>, <timewarner.link>, <timewarner.work>, <timewarnerchina.site>, and <timewarnerasia.site> domain names are confusingly similar to Complainant’s TIME WARNER mark, because they incorporate the mark in its entirety, eliminating spaces, adding geographical terms (“china” and “asia”), and six descriptive TLDs (“.click”, “.photo”, “.red”, “.link”, “.work”, and “.site”). Typically, panels have found that such changes do not distinguish a disputed domain name from a mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s TIME WARNER mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), 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 maintains that Respondent does not have rights or legitimate interests in the <timewarner.click>, <timewarner.photo>, <timewarner.red>, <timewarner.link>, <timewarner.work>, <timewarnerchina.site>, and <timewarnerasia.site> domain names, asserting that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “Lu Zhen” as the registrant of the disputed domain names. Panels typically find that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of information to the contrary. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Thus, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain names, since they do not resolve to any webpages. The Panel notes that Respondent has not made an active use of the disputed domain names since the time of registration. Panels have found that a “[r]espondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).” See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007). The Panel finds that Respondent’s failure to make an active use of the disputed domain names indicates that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the disputed domain names, and therefore lacks rights or legitimate interests in the disputed domain names.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered <timewarner.click>, <timewarner.photo>, <timewarner.red>, <timewarner.link>, <timewarner.work>, <timewarnerchina.site>, and <timewarnerasia.site> in bad faith, arguing that all seven domain names use Complainant’s registered TIME WARNER mark, thereby showing a pattern of bad faith registration under Policy ¶ 4(b)(ii). Panels have held that a respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Time Warner Inc. v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that the respondent registered and used the domain names <emiwarnermusic.com>, <emiwarner.org>, <emiwarner.net>, <warneremi.net>, and <warneremi.org> in bad faith when the respondent registered them after an announced merger between Time Warner Inc. and EMI Group, and the respondent previously registered fifteen other domain names that incorporated the complainant’s mark, showing the requisite pattern of conduct). Accordingly, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent is inactively holding the disputed domain names. The Panel and finds that Respondent has acted in bad faith pursuant to Policy ¶ 4(a)(iii). See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”).
Finally, Complainant alleges that Respondent registered the disputed domain names with actual knowledge of Complainant and its rights in the TIME WARNER mark. Complainant argues that in light of the fame and notoriety of Complainant's TIME WARNER mark, it is inconceivable that Respondent could have registered the <timewarner.click>, <timewarner.photo>, <timewarner.red>, <timewarner.link>, <timewarner.work>, <timewarnerchina.site>, and <timewarnerasia.site> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees and finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (FORUM Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
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.click> ,<timewarner.photo>, <timewarner.red>, <timewarner.link>, <timewarner.work>, <timewarnerchina.site>, and <timewarnerasia.site> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 27, 2017
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