Warner Bros. Entertainment Inc. v. David Haddad / Warner Bros
Claim Number: FA1706001736053
Complainant is Warner Bros. Entertainment Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie, Colorado, USA. Respondent is David Haddad / Warner Bros (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <warnerbroscareers.com.co>, registered with Click Panda - Dominio Amigo SAS.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2017; the Forum received payment on June 15, 2017.
On June 20, 2017, Click Panda - Dominio Amigo SAS confirmed by e-mail to the Forum that the <warnerbroscareers.com.co> domain name is registered with Click Panda - Dominio Amigo SAS and that Respondent is the current registrant of the name. Click Panda - Dominio Amigo SAS has verified that Respondent is bound by the Click Panda - Dominio Amigo SAS 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 22, 2017, the Forum served the English language Complaint and all Annexes, including a English and Spanish language Written Notice of the Complaint, setting a deadline of July 12, 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@warnerbroscareers.com.co. Also on June 22, 2017, the English and Spanish language 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 July 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Trademark/Service Mark Information: Rule 3(b)(viii).
The Complaint is based on Complainant’s marks incorporating WARNER BROS. (the “Warner Bros. Marks”), which are identified solely and exclusively with Complainant. Complainant’s Warner Bros. Marks have been used in commerce for entertainment services since at least as early as 1939 in the U.S. Complainant owns worldwide rights for its Warner Bros. Marks and also maintains, among others, many U.S. trademark registrations for the Warner Bros. Marks, as attached to the Complaint.
As a result of Complainant’s widespread and prominent use of the mark WARNER BROS or WARNER BROS. for more than 75 years, Complainant’s mark has become well known throughout the world.
In addition, Complainant registered the domain name warnerbroscareers.com on September 27, 2007, and it has used the domain in connection with employment-related services since at least as early as 2007.
Complainant’s Communications with Respondent and the Registrar.
On May 1, 2017, Complainant informed Respondent that the Disputed Domain was registered by utilizing false information and Respondent was impersonating an executive employee of Complainant. Complainant requested that Respondent immediately cease using the Disputed Domain and transfer it to Complainant. Respondent replied by stating “Mis I am not using your domain name.”
Complainant also contacted the Registrar to address the Disputed Domain and Respondent’s false WHOIS information. On May 19, 2017, the Registrar informed Complainant that it is not responsible for disputes related to domain names, and it would not take action without a court order or UDRP decision.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a]. The Disputed Domain is Confusingly Similar to Complainant’s Warner Bros. Marks
[i.] The Disputed Domain is confusingly similar to Complainant’s Warner Bros. Marks, and it is nearly identical to Complainant’s warnerbroscareers.com domain name. In particular, the Disputed Domain wholly incorporates WARNER BROS and adds the generic term “careers,” “.com,” and the two-letter country top-level domain for Colombia (“.co”). Previous panels have found confusing similarity when a respondent merely adds a generic or descriptive term to a complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not, by adding common descriptive or generic terms, create new or different marks nor does it alter the underlying mark held by the complainant); Pepsico, Inc. v. Richard Leeds d/b/a NeonGecko, Inc., FA 117870 (Forum Sept. 27, 2002) (finding respondent’s addition of generic term “bottling” to domain with complainant’s mark did not create the distinction necessary to overcome the confusing similarity between the disputed domain name and complainant’s mark); Capital One Fin. Corp. v. Mai Erne / Hara Partners, FA 1617710 (Forum June 12, 2015) (finding disputed domain <aboutcapitalone.us> confusingly similar to complainant’s CAPITAL ONE mark); MasterCard Int’l, Inc. v. Ole Bangstein / Wavepass AS, FA 1460915 (Forum Oct. 16, 2012) (finding disputed domain <mastercardgiftcard.us> confusingly similar to complainant’s MASTERCARD mark); Am. Express Co. v. McWilliam, FA 268423 (ForumJuly 6, 2004) (finding disputed domain <americanexpresstravel.us> confusingly similar to complainant’s AMERICAN EXPRESS mark).
[ii.] Likewise, the inclusion of “.co” and “.com” in the Disputed Domain does not diminish the confusing similarity with Complainant’s Warner Bros. Marks and warnerbroscareers.com domain name. See Abbott Labs. v. Whois Service c/o Belize Domain WHOIS Service, FA 1254682 (Forum May 14, 2009) (“addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”); L’Oréal v. van der Linden, D2012-0001 (WIPO Feb. 15, 2012) (“addition of the ccTLD denomination to a trademark is irrelevant and does not change the likelihood of confusion between a domain name and a registered trademark”); Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).
[iii.] Complainant’s trademark registrations and rights in its Warner Bros. Marks predate Respondent’s acquisition of the Disputed Domain, and Complainant has clear priority in its use and registration of the Warner Bros. Marks. Under the UDRP, valid trademark registrations are sufficient in demonstrating rights in a mark under Policy ¶4(a)(i) and panels have continuously found that evidence of a registration with the USPTO is adequate to establish rights in a mark regardless of where respondent resides. See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks”); Humor Rainbow, Inc. v. Lee, FA 1626154 (Forum Aug. 11, 2015) (“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).”); Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Additionally, Complainant’s registration of the domain name warnerbroscareers.com predates Respondent’s registration of the Disputed Domain by nearly ten years. See Exhibits A, E.
[iv.] Based on the foregoing, the Disputed Domain is confusingly similar to Complainant’s Warner Bros. Marks under Policy ¶4(a)(i).
[b.] Respondent Has No Rights or Legitimate Interests in the Disputed Domain
[i.] A complainant must prove that a respondent has “no rights or legitimate interests in respect of the domain name.” Policy ¶4(a)(ii). Here, Respondent has no license or authorization to use Complainant’s Warner Bros. Marks and is not commonly known by the Disputed Domain or any variant of Complainant’s Warner Bros. Marks. Moreover, Respondent’s WHOIS information is unquestionably false. The WHOIS information lists Respondent’s name as “David Haddad.” In fact, David Haddad is the name of a senior executive employed by Complainant’s subsidiary, Warner Bros. Interactive Entertainment. The WHOIS information also lists Complainant’s address (3400 W. Riverside Drive, Burbank, CA 91505) as Respondent’s address. Neither the true David Haddad (executive of Complainant) or Warner Bros. (Complainant) registered the Disputed Domain. In addition, the email address listed for the Disputed Domain (wbcproducciones@gmail.com) is not controlled by or associated with the true David Haddad or Complainant. Respondent’s demonstrable use of false WHOIS information evinces Respondent’s lack of rights or legitimate interests in the Disputed Domain. See First Coast Energy, L.L.P. v. Jim Bazley / First Coast Energy, FA 1554730 (Forum May 27, 2014) (finding WHOIS information insufficient to show rights or legitimate interests where the unknown registrant falsely used the complainant’s name in the registration of the domain name); Morgan Stanley v. Morgan, FA 1715028 (ForumMarch 9, 2017) (finding the respondent was not commonly known by <morganstanley-us.com> where the respondent provided false WHOIS information and did not have authorization to use the complainant’s mark); Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding bad faith registration and use where the respondent provided false contact information when registering the disputed domain name); Navistar Int’l Corp. v. Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
[ii.] Moreover, Respondent has not and is not using the Disputed Domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent used the Disputed Domain to impersonate Complainant and engage in a scheme where Respondent advertised an employment position with Complainant in order to obtain personal information from deceived job applicants. Complainant has received various complaints from individuals that were deceived into providing personal information to Respondent. Respondent’s fraudulent and illegal activity demonstrates Respondent’s lack of legitimate interests in the Disputed Domain. See, e.g., Exxon Mobil Corp. v. John Doe, FA 1507695 (Forum Aug. 12, 2013) (holding there was no bona fide offer of goods or services where respondent held himself out as an employee of complainant); Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (“Respondent’s registration and use of the Domain Name for fraudulent and illegal activities, namely, false impersonation and theft, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use . . . .”); Regents of the Univ. of Michigan v. VistaPrint Tech. Ltd., FA 1460764 (Forum Oct. 5, 2012) (finding no bona fide use where respondent passed itself off as the complainant and requested price quotes on research materials from complainant’s vendors); Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding no legitimate rights or interests where respondent used <billing-juno.com> to send emails intended to deceive complainant’s customers into providing their credit card and other personal information); Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that respondent’s attempts to pass itself off as complainant evinced respondent’s lack of rights or legitimate interests in the domain name <aig- ma.com>).
[iii.] Additionally, the Disputed Domain does not resolve to an active website. The passive holding of a website does not show a legitimate use or bona fide offering of goods or services. See Teachers Ins. and Annuity Ass’n of Am. v. Wreaks Commc’ns Group, D2006-0483 (WIPO June 15, 2006) (“passive holding of a domain name does not constitute ‘legitimate non- commercial or fair use’”); TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶4(a) (ii)”).
[iv.]Complainant’s Warner Bros. Marks are also so well-known that the only plausible inference that can be derived from Respondent’s registration of the Disputed Domain (which is nearly identical to Complainant’s warnerbroscareers.com domain name) is that Respondent registered the domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks. See Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Complainant’s marks are so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks.”).
[v.] Last, Respondent does not have any legitimate rights in the Disputed Domain given the prior use and registration of Complainant’s Warner Bros. Marks by Complainant in numerous countries around the world. Complainant’s prior use of marks incorporating WARNER BROS. or WARNER BROS and registration of such marks gave Respondent actual, or at a minimum constructive, knowledge of such use and registration. See Nuplex Indus. Ltd. v. Nuplex, D2007-0078 (WIPO Apr. 3, 2007) (stating it is unlikely respondent did not know of complainant’s rights since complainant’s mark is well-known throughout the world); Nike, Inv. v. B.B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding it unlikely, if not impossible, that respondent was not aware it was infringing complainant’s well-known mark, and therefore, the Panel concluded the registration was in bad faith). This is particularly the case when Respondent misappropriated Complainant’s contact information to register the Disputed Domain.
[vi.] Therefore, Respondent has no rights or legitimate interests in the Disputed Domain.
[c.] The Disputed Domain Has Been Registered and is Being Used in Bad Faith
[i.] Respondent uses the Disputed Domain to deceive job applicants and unlawfully capitalize on mistaken or confused Internet users. Use of a domain name to intentionally create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of a complainant constitutes bad faith. Policy ¶4(b)(iv). See, e.g., Smiths Group plc, FA 1372112 (“Respondent disrupts Complainant’s business by using the Domain Name to pass itself off as Complainant for Respondent’s fraudulent commercial gain.”); Regents of the Univ. of Michigan, FA 1460764 (“The Panel finds that Respondent’s fraudulent attempts to pass itself off as Complainant constitute evidence of bad faith registration and use.”); Am. Int’l Group, Inc., FA 156251 (use of the domain name <aig-ma.com> constituted bad faith and fraud where respondent gave the appearance of being associated or affiliated with complainant’s business); Yahoo! Inc. v. Dank, FA 203169 (Forum Dec. 6, 2003) (finding respondent’s use of the disputed domain name for an information theft scam and illegal commercial gain constituted bad faith);
[ii.] Respondent’s passive holding of the Disputed Domain also constitutes bad faith. Panels have routinely found bad faith use and registration where a respondent passively holds a domain name. See Marsh Supermarkets Co., LLC, formerly known as Marsh Supermarkets, Inc. v. Sungyeon, FA 1532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”); Microsoft Corp. v. Qing, FA 1447828 (Forum July 8, 2012) (respondent’s failure to make an active use of the <microsoftcloudaccelerator.com> domain name found to be bad faith).
[ii.] Further, at the time that Respondent registered the Disputed Domain, Respondent knew that Complainant was the owner of the Warner Bros. Marks and warnerbroscareers.com domain name. The WHOIS information for the Disputed Domain lists David Haddad (executive of Warner Bros. Interactive Entertainment) as the registrant and Warner Bros. as the registrant organization. As stated above, neither David Haddad nor Warner Bros./Complainant registered the Disputed Domain. Respondent’s use of both Warner Bros. and Mr. Haddad’s name demonstrates that Respondent knew of Complainant and its rights in the Warner Bros. Marks prior to registering the Disputed Domain. These actions constitute bad faith.
[iii.] Respondent’s registration of the Disputed Domain suggesting a connection to Complainant (even though Respondent has no connection to Complainant whatsoever) is further evidence of bad faith. See Bergdorf Goodman, Inc. & NM Nevada Trust v. Huang, FA 1286505 (Forum Nov. 4, 2009) (“[T]he registration of a confusingly similar domain name that is obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith.”); Deutsche Bank AG v. Bruckner, D2000-0277 (WIPO May 30, 2000) (“The Domain Name is so obviously connected with the complainant and its services that its very use by someone with no connection with the complainant suggests opportunistic bad faith”). In particular, the Disputed Domain is nearly identical to Complainant’s domain warnerbroscareers.com (merely adds “.co”) and wholly incorporates Complainant’s well-known WARNER BROS. mark.
[v.] Therefore, Respondent has registered and is using the Disputed Domain in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Language Request
Complainant implicitly requests this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). The Registration Agreement is in both the English and Spanish languages. Since the Registration Agreement is in both languages, Complainant can decide which language it will use. Complainant has implicitly selected English and the Panel will respect that choice. Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, Claim Number: FA1706001734634 (July 2017). Complainant will not be required to proceed in both languages.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 registered the WARNER BROS. mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,026,466, registered Dec. 2, 1975). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark 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).”). Complainant has established its rights in the WARNER BROS. mark.
Complainant claims Respondent’s <warnerbroscareers.com.co> domain name is identical or confusingly similar to Complainant’s mark because it wholly incorporates the WARNER BROS. mark and adds the generic term “careers,” “.com,” and the ccTLD for Colombia, “.co.”. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶4(a)(i) analysis, as a top-level domain is required of all domain names”). The <warnerbroscareers.com.co> domain name is confusingly similar to the WARNER BROS. mark under Policy ¶4(a)(i) and is identical to Complainant’s <warnerbroscareers.com> domain name. Respondent is clearly trying to pass itself off as Complainant.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the <warnerbroscareers.com.co> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “David Haddad / Warner Bros” as the registrant. The WHOIS information is inaccurate because Complainant’s employee did not register this domain name. Respondent has never been legitimately known by the WARNER BROS. mark. Absent alternative corroborating evidence in the record that a respondent is commonly known by a disputed domain name can render the WHOIS information meaningless. See Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, this Panel finds that, although the registrant organization on the WHOIS record is listed as ‘DTAPLES.COM,’ the evidence on record is sufficient to find that Respondent is not commonly known by the <dtaples.com> domain name.”). Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. The Panel must conclude Respondent is not commonly known by the <warnerbroscareers.com.co> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent fails to use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as it attempts to phish for information from consumers. Phishing attempts evidence a lack of any bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Respondent uses the <warnerbroscareers.com.co> domain name to hold itself out as Complainant to mislead individuals into divulging personal information in hopes of receiving employment from Complainant. Respondent does not provide a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
The disputed domain name fails to directs users to a website. Failure to make active use of a confusingly similar domain name is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”). Respondent has failed to provide a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent registered and is using the <warnerbroscareers.com.co> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit. Respondent uses the domain name to get personal information from the gullible by offering jobs (essentially a phishing scheme) because it is close to one of Complainant’s domain names (and uses one of Complainant’s executive’s names). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting) and 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).”). Respondent’s attempts to confuse users and commercially benefit off Complainant’s mark are in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent inactively holds the domain name because Respondent fails to use the disputed domain name for any purpose (except for sending fake emails). Inactively holding a confusingly similar domain name is evidence of bad faith registration and use under Policy ¶4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”). Respondent registered and uses the disputed domain name in bad faith by not making an active use of the domain name.
Finally, Complainant claims Respondent had actual knowledge of Complainant’s WARNER BROS. mark. Actual knowledge is evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent must have had actual knowledge of Complainant’s mark because it registered a domain name nearly identical to Complainant’s <warnerbroscareers.com> domain name (using the name of one of Complainant’s executives as the registrant). The Panel must conclude Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶4(a)(iii). Coincidence does not explain Respondent’s actions.
When somene registers a domain name, they must provide accurate WHOIS information. In the commercial context, failing to provide accurate WHOIS information raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. Therefore, this Panel must find bad faith on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <warnerbroscareers.com.co> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, July 17, 2017
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