AT&T Intellectual Property II and Warner Media, LLC v. DONG SOO KIM
Claim Number: FA1812001821550
Complainant is AT&T Intellectual Property II and Warner Media, LLC (“Complainant”), represented by Rob LeBlanc of Haynes and Boone, LLP, Texas, USA. Respondent is DONG SOO KIM (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <warner-media.net>, <att-media.com>, <att-warner.com>, <attmediagroup.com>, <attwarner.net>, <attwarnermedia.com>, and <warnermedia.biz>, registered with Megazone Corp., dba HOSTING.KR; and <warnermedia.company>, registered with Tucows Domains Inc..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 17, 2018; the Forum received payment on December 17, 2018.
On December 18, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <warnermedia.company> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. On December 26, 2018, Megazone Corp., dba HOSTING.KR confirmed by e-mail to the Forum that the <warner-media.net>, <att-media.com>, <att-warner.com>, <attmediagroup.com>, <attwarner.net>, <attwarnermedia.com>, <warnermedia.biz> domain names are registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the names. Megazone Corp., dba HOSTING.KR and Tucows Domains Inc. have verified that Respondent is bound by the respective registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2019 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@warner-media.net, postmaster@att-media.com, postmaster@att-warner.com, postmaster@attmediagroup.com, postmaster@attwarner.net, postmaster@attwarnermedia.com, postmaster@warnermedia.company, and postmaster@warnermedia.biz. Also on December 28, 2018, 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 January 21, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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. Multiple complainants
There are two named complainants. Paragraph 3(a) of the Rules states that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Complaint states that AT&T Intellectual Property II and Warner Media, LLC are sufficiently linked for the purposes of Supplemental Rule 1(e) because they are wholly-owned subsidiaries of AT&T Inc. and are, respectively, the registered owners of the ATT and WARNERMEDIA trademarks which are critical to paragraph 4(a)(i) of the Policy. Absent any challenge from Respondent or any other reason not to accept these claims the Panel accepts that there is a sufficient nexus or link between the named complainants and so treats them as a single entity in this proceeding, hereinafter referring to both as “Complainant” unless otherwise stated.[i]
B. Language of the proceedings
The Panel notes the Korean language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore Korean. Nevertheless, Complainant requests that the proceedings be in the English language. The Panel has discretion under the Rules to allow that request and in the past UDRP panels have taken account of factors which demonstrate a respondent’s proficiency with the English language.[ii] Here, Complainant’s submissions, inter alia, are that the resolving websites state in English “Thank you for visiting our website. If you have any inquiries please send us an email.” Further, that Respondent responded in English to an email from Complainant.
The Panel finds that the evidence is sufficient to warrant under Rule 11(a) that the proceedings should be in English.
A. Complainant
Complainant asserts trademark rights in AT&T, WARNERMEDIA and TIME WARNER and alleges that the disputed domain names are confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides media and communication services by reference to the trademarks AT&T, WARNERMEDIA and TIME WARNER;
2. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) Trademark Reg. No. 1,353,769, registered August 13, 1985 for the mark AT&T and Reg. No. 1,816,474, registered January 11, 1994 for the mark TIME WARNER;
3. the disputed domain names were registered in June 2018 and all have resolved to landing pages stating: “Thank you for visiting our website. If you have any inquiries please send us an email”; and
4. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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 based on 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.[iii]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[iv] Since Complainant provides evidence of its USPTO trademark registrations the Panel is satisfied that it has rights in AT&T and TIME WARNER.
Complainant also claims rights in the unregistered WARNERMEDIA mark on two bases – first, that rights somehow accrue from the filing date of USPTO applications for that trademark, and secondly, through use.
Unless a national registration is proven, an application for registration does not assist Complainant. Any UDRP case asserting otherwise is simply wrong.[v] Further, albeit that Complainant claims that WARNERMEDIA has been used since 1990 and exhibits some proof of its use, there is no compelling evidence that the term has acquired the status of a common law trademark.
The Panel finds insufficient proof of trademark rights in WARNERMEDIA. Nevertheless, Complainant argues in the alternative that addition of the essentially descriptive word “media” adds nothing. The Panel is in agreement and finds that the paragraph 4(a)(i) assessment can be completed without further regard to any claim to trademark rights in the expression WARNERMEDIA, save for the observation that the evidence, be it as it is, shows that this term “media” has been used descriptively by Complainant in its business.
Stripped of their non-distinctive TLDs the terms to be compared with the trademarks are:
warner-media
att-media
att-warner
attmediagroup
attwarner
attwarnermedia
warnermedia
warnermedia
In short, the non-distinctive word “media” and in one instance the descriptive word “group” are added to what the Panel considers to be obvious contractions of the trademarks. In some instances those contractions themselves are coupled (with or without the descriptive words) and whilst many years ago UDRP panelists were exercised by the paragraph 4(a)(i) question of whether or not a disputed domain name composed of a compilation of a complainant’s trademarks is confusingly similar to one or another of those trademarks, these administrative proceedings do not warrant re-examination of that question. The Panel finds the disputed domain names to be confusingly similar to one other or both of Complainant’s trademarks.[vi]
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[vii]
The publicly available WHOIS information identifies “DONG SOO KIM” as the registrant of the domain names which does not provide any prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademarks for any purpose.
The evidence is that the disputed domain names have resolved to landing pages with no real content, inviting internet users to make email contact. Complainant submits that anyone doing so would naturally hold the belief that they were contacting Complainant. The Panel finds that there has been no bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names.[viii]
The Panel finds that Complainant has made a prima facie case. The onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds registration and use in bad faith pursuant to paragraph 4(b)(iv) above. The Panel has already found the disputed domain names to be confusingly similar to the trademark. Confusion is inevitable. It is more likely than not that the resolving website exists for commercial gain in some form or another. In the absence of another explanation the Panel finds that Respondent targeted Complainant’s trademark and business at the time of registration and then used the domain names so as to create the impression of an affiliation with Complainant.
The Panel finds registration and use of the domain names in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.[ix]
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <warner-media.net>, <att-media.com>, <att-warner.com>, <attmediagroup.com>, <attwarner.net>, <attwarnermedia.com>, <warnermedia.company> and <warnermedia.biz> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: January 22, 2019
[i] See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006).
[ii] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also (Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[iii] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum Jul. 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; 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.”)
[iv] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[v] See, for example, See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”) amongst many other decisions.
[vi] See, for example, Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) holding that the addition of both the word “advisors” and the gTLD “.com” did not negate a finding of confusing similarity under Policy ¶ 4(a)(i).
[vii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[viii] See, for example, Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum Jun. 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”).
[ix] See, for example, AOL LLC v. iTech Ent, LLC, FA 726227 (Forum Jul. 21, 2006) finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page