Time Warner Inc. v.
AOLMEMBERS.COM a/k/a AOLINDEX.COM a/k/a Coma On Line-Coma Pacients Family
Advice (Under Constuction) a/k/a CNNFI.COM - Chinese Network For Income (Under
Construction) a/k/a COMCNN.COM, Compania CoCin De
Claim Number: FA0701000881337
Complainant is Time
Warner Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <aolmembers.com>, <aolindex.com>, <comaol.com>, <comcnn.com>, <cnnfi.com> and <cnnbc.com>, registered with Tucows Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 3, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 4, 2007.
On January 4, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <aolmembers.com>, <aolindex.com>, <comaol.com>, <comcnn.com>, <cnnfi.com> and <cnnbc.com> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@aolmembers.com, postmaster@aolindex.com. postmaster@comaol.com, postmaster@comcnn.com, postmaster@cnnfi.com and postmaster@cnnbc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Complainant Time Warner Inc., through its subsidiaries, affiliates and predecessors-in-interest (herein collectively "Time Warner") owns rights to numerous names and marks, as well as trademark registrations worldwide for various marks, including:
- AOL (U.S. trademark Reg. No. 1,977,731, issued on June 4, 1996); and
- CNN (U.S. trademark Reg. No. 1,597,839, issued on May 22, 1990).
2. These
registrations constitute prime facie and/or conclusive evidence of the validity
and subsistence of the AOL and CNN marks, as well as Time Warner’s ownership of
and exclusive right to use the marks in commerce, without restriction or
limitation, and they provide constructive notice of Time Warner’s ownership.
3. Time
Warner uses its AOL and CNN marks extensively around the world in connection
with promoting and advertising goods and services.
4. Since
long prior to the acts complained of herein, Time Warner has used its AOL and
CNN marks continuously in connection with the advertising and sale of a wide
variety of Internet, cable television, and broadcasting services, and other
goods and services to Internet users and other customers.
5. Time
Warner is a global leader in the media and entertainment industries. The company has invested substantial sums of
money in developing and marketing its products, services and world-famous marks
AOL and CNN.
6. With
tens of millions of subscribers, AOL is one of the world’s largest and
well-known interactive online service providers. CNN’s combined branded networks and services
are available to more than 1.5 billion people in over 212 countries and
territories. Each year millions of AOL
and CNN customers worldwide obtain services offered under the AOL and CNN
marks; millions more are exposed to said marks through extensive advertising
and promotion.
7. The
AOL and CNN marks have been and continue to be widely publicized through
substantial advertising throughout the
8. Sales
of goods and services under the AOL and CNN marks have amounted to many
billions of dollars and the general public has come to associate the AOL and
CNN marks with goods and services of a high and uniform quality.
9. Because
of these substantial advertising expenditures and sales, the AOL and CNN marks
have become well‑known and famous among members of the purchasing public
as distinctive indicators of the services offered by Time Warner.
10. Time Warner owns and uses AOL.COM and CNN.COM in connection with providing information and services on the Internet. The AOL and CNN marks are used extensively at these Web sites, which are a significant method of promoting Time Warner’s well-known services. As a result, consumers associate the AOL and CNN marks, when used in domain names, with Time Warner’s services.
11. Many years after Time Warner’s adoption and first use of its marks, Respondent registered the infringing domain names at issue in this case with a bad faith intent to profit from the registration and use of the domains. Respondent’s actions are a clear and blatant violation of Time Warner’s intellectual property rights. Respondent’s bad faith actions demonstrate an utter disregard and contempt for Time Warner’s legal rights and ICANN’s Uniform Domain Name Dispute Resolution Policy.
12. The subject domain names are nearly identical and confusingly similar to the Time Warner Marks and the domain names used by Time Warner to promote its products and services online. Consumer confusion is particularly likely because Respondent has registered and is using domain names that combine the famous AOL and CNN marks with a generic word like “index” or a short letter string like “com” or “fi.” As set forth above, the Time Warner Marks are known around the world and consumers that come across the infringing domain names are likely to believe that Time Warner endorses or is affiliated with Respondent or his Web sites.
13. Respondent registered and uses the infringing domains with a bad faith intent to capitalize on Time Warner’s famous names and marks, and profit from the international and domestic goodwill that exist in those marks. As already noted, and more fully detailed below, Respondent’s infringement is willful and repetitive.
14. Respondent has no rights or legitimate interests in the subject domain names. Respondent initially used false contact information to register the domain names. Time Warner’s counsel notified the registrar of this activity and Respondent updated the Whois records with a new mailing address and fictitious names in an attempt to justify his bad faith actions. For example, Respondent uses various aliases, e.g., Coma On Line-Coma Pacients [sic] Family Advice. Despite this different registrant names, it is obvious that the same person is responsible for all the infringing domain names because he/she uses the same mailing address, e-mail address, and other contact information. Respondent is not licensed or authorized to use the AOL or CNN marks, and Respondent is not named or commonly known as AOL or CNN. The following is evidence of Respondent’s bad faith registration and use of the domains:
(a) Respondent’s bad faith registration of the domains is evidenced by the fact that the domains were registered many years after the Time Warner Marks had become famous and well-known to consumers. Whois Records. The fact that Respondent registered so many domain names that infringe upon both the AOL and CNN marks further demonstrates that the domain names were registered in bad faith as part of an overall strategy to collect a large number of infringing domain names to increase the likelihood that Respondent will attract Internet traffic from unknowing and unwitting Internet users. Therefore, Respondent had actual knowledge of the AOL and CNN marks at the time the domains were registered, and the domains were registered in bad faith.
(b) Respondent’s bad faith use of the infringing domains is shown by the
commercial Web site that is used in connection with the infringing domains. The domain names route to a commercial site called MegaGo.com, which provides links to numerous topics, including pornographic (“adult” and “xxx”) and gambling (“gambling” and “roulette”) sites. Respondent’s Web site also provides links to numerous services that compete directly with those provided by Time Warner under its AOL and CNN marks, including “news” and “Internet.” Respondent registered and uses the domains in bad faith solely to route consumers to Respondent’s Web sites. The Web sites have no legitimate relationship to the AOL or CNN services. Respondent’s use of the domains in this manner violates Paragraph 4(b)(iv) of the UDRP and constitutes a bad faith use of the domains.
(c) In addition to the domain names at issue in this case, Respondent has infringed
upon numerous third party marks and is a notorious cybersquatter. As noted above, Respondent intentionally uses various aliases and false mailing addresses to hide his/her identity. It is clear from reviewing the unique e-mail address (jtubul@yahoo.com) provided in the Whois records, however, that Respondent owns numerous infringing domain names, including “AltatVista.com” “Amritrade.com” “AskJevees.com” “Chevrolett.com” and “BritishAirlines.com.” It is apparent from this list that Respondent indiscriminately targets trademark owners from a variety of professions and businesses. Respondent’s intentional recidivism and knowing infringements constitute a bad faith use of the infringing domain names pursuant to Section 4(b)(ii) of the UDRP, and prevent Time Warner from reflecting its own marks in corresponding domain names. Respondent’s intentional and repeated use of a false mailing address further demonstrates Respondent’s bad faith intent.
(d) Based upon (1) the fame of the AOL and CNN marks; (2) Time Warner’s trademark registrations; (3) Respondent’s significant pattern of infringing upon
famous marks; and (4)Respondent’s use of the infringing domain names to route
unknowing consumers to third party commercial services, Respondent cannot in
good faith claim that he had no knowledge of Time Warner’s rights in its famous AOL and CNN marks. Furthermore, Respondent cannot claim in good faith that he made a legitimate noncommercial or fair use of the subject domains, or that he is commonly known as AOL or CNN.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Time Warner Inc., holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AOL and CNN marks (i.e. Reg. No. 1,977,731 registered on June 4, 1996 and Reg. No. 1,597,839 registered on May 22, 1990 respectively). Complainant uses the AOL and CNN marks for the promotion and advertisement of goods and services internationally, primarily for Internet, cable television, and broadcasting services. Complainant’s AOL mark is used in connection with its interactive online services, which has tens of millions of subscribers, and Complainant’s CNN mark is used to offer combined networks and services to more than 1.5 billion people in over 212 countries and territories.
Respondent registered the <aolmembers.com>, <aolindex.com>, <comaol.com>, <comcnn.com>, <cnnfi.com> and <cnnbc.com> domain names on September 17, 1998, February 24, 1997, September 28, 1998, October 3, 1998, May 27, 1998 and September 16, 1998 respectively. Respondent is using the domain names to redirect Internet users to Respondent’s website displaying links to adult oriented material and gambling sites as well as links to sites that directly compete with Complainant’s goods and services under the AOL and CNN marks.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant has established rights in the AOL and CNN marks through registration of the marks with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <aolmembers.com>, <aolindex.com>,
<comaol.com> and <comcnn.com> domain names are
confusingly similar to Complainant’s AOL and CNN marks because Respondent’s
domain names use one of the Complainant’s marks in its entirety and simply adds
generic or descriptive terms such as “members” or “index” or “com” to the
mark. The Panel finds these minor additions
do not overcome the confusingly similar
characteristics to Complainant’s mark under Policy ¶4(a)(i). See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also Am. Int’l
Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003)
(finding that the addition of the term “assurance,” to the complainant’s AIG
mark failed to sufficiently differentiate the name from the mark under Policy
¶4(a)(i) because the appended term related directly to the complainant’s
business); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO
Feb. 12, 2001) (finding that the addition of the generic word “Net” to the
complainant’s ICQ mark, makes the <neticq.com> domain name confusingly
similar to the complainant’s mark).
Respondent’s <cnnfi.com> and <cnnbc.com>
domain names are confusingly similar to Complainant’s CNN mark because
Respondent’s domain names use one of the Complainant’s marks in its entirety
and merely adds a few letters to the mark. The Panel finds these minor
additions do not alter Complainant’s mark sufficiently to negate the
confusingly similar aspects of Respondent’s domain names under Policy
¶4(a)(i). See Kelson Physician
Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that
<kelsonmd.com> is identical or confusingly similar to the complainant’s
federally registered service mark, KELSON); see also Am. Online, Inc. v.
Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding
that <oicq.net> and <oicq.com> are confusingly similar to the
complainant’s mark, ICQ).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <aolmembers.com>, <aolindex.com>, <comaol.com>, <comcnn.com>, <cnnfi.com> and <cnnbc.com> domain names. Complainant’s assertion Respondent has no rights or legitimate interests establishes a prima facie case and shifts the burden to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶4(a)(ii). The Panel assumes Respondent does not have rights or legitimate interests in the disputed domain name here because Respondent has failed to respond to the Complaint. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel will evaluate the available evidence to determine whether the Respondent has rights or legitimate interests in the disputed domain name pursuant to policy ¶4(c).
Complainant alleges Respondent is using the <aolmembers.com>, <aolindex.com>, <comaol.com>, <comcnn.com>, <cnnfi.com> and <cnnbc.com> domain names to redirect Internet users to Respondent’s website displaying links to adult oriented material and gambling sites as well as links to websites offering competing goods and services. Respondent’s use of the domain names to display competitors’ links is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest where the respondent used the disputed domain name to redirect Internet users to an online casino); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Sony Kabushiki Kaisha v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent’s use of its domain name in order to divert Internet users to a website that offers search engine services and links to adult oriented websites was not considered to be in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) or 4(c)(iii)).
Respondent has offered no evidence and none is
present in the record suggesting that Respondent is commonly known by the <aolmembers.com>,
<aolindex.com>, <comaol.com>, <comcnn.com>,
<cnnfi.com> and <cnnbc.com> domain names. Respondent’s WHOIS information identifies the
Respondent by multiple different names but all containing the same email
address contact (i.e. “CoNaN Before Christ Chirch Of God” (sic) is the
registrant for <cnnbc.com> and “Coma on Line-Pacients Family
Advice” (sic) is the registrant for <comaol.com>). These appear to be fictitious names selected
solely so a claim could be made the Respondent is known by the domain
name. As a result, Respondent has failed
to establish rights or legitimate interests in the <aolmembers.com>,
<aolindex.com>, <comaol.com>, <comcnn.com>,
<cnnfi.com> and <cnnbc.com> domain names under Policy
¶4(a)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶4(c)(ii) does not
apply); see also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum
Feb. 20, 2003) (noting that “the disputed domain name does not even correctly
spell a cognizable phrase” in finding that the respondent was not “commonly
known by” the name “girls gon wild” or <girlsgonwild.com>); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds Policy ¶4(a)(ii) has been satisfied.
Respondent has registered and is
using the <aolmembers.com>, <aolindex.com>, <comaol.com>,
<comcnn.com>, <cnnfi.com> and <cnnbc.com>
domain names, which are confusingly similar to Complainant’s AOL and CNN marks,
in order to redirect Internet users to Respondent’s website displaying links to
adult oriented material and gambling sites and displaying links to websites in
competition with Complainant’s good and services. The Panel finds such a use constitutes
disruption of Complainant’s business and is evidence of bad faith registration
and use pursuant to Policy ¶4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that
the respondent registered and used the domain name <eebay.com> in bad
faith where the respondent has used the domain name to promote competing
auction sites); see also AltaVista
Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under
Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that
offered links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes).
Respondent is using the <aolmembers.com>, <aolindex.com>, <comaol.com>, <comcnn.com>, <cnnfi.com> and <cnnbc.com> domain names to redirect Internet users to Respondent’s website that displays links to competing goods as well as links to adult oriented material and gambling sites for the assumed profit of Respondent. The Panel finds that because Respondent’s domain name is confusingly similar to Complainant’s AOL and CNN marks, Internet users may become confused as to Complainant’s affiliation with the website. Presumably, Respondent is profiting from this confusion. The Panel finds Respondent’s use of the <aolmembers.com>, <aolindex.com>, <comaol.com>, <comcnn.com>, <cnnfi.com> and <cnnbc.com> domain names constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Respondent has also given fictitious or false WHOIS information about both the registrant’s name and physical address. This raises the presumption of bad faith registration and use. See Agent Host v. Host Dot Com Investments AF-0343 (10/16/2000), The Procter & Gamble Company v. Hong Gil Dong, FA0510000572962 (11/16/2005), Mattel, Inc. v. RanComp Ltd., FA0510000579563 (11/29/2005), Zappos.com, Inc. v. RENATA Svensdotter, FA0601000624407 (2/22/2006), Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. Yong Li, FA0510000576550 (3/27/2006), Ulysses Learning Corporation v. G. Sone and Associates, Inc., FA0602000645878 (3/27/2006), Microsoft Corporation v. Marine Safety Network Weather, FA0603000655480 (4/26/2006), Target Brands, Inc. v. Domains Ventures, FA0603000671035 (5/15/2006), Ebynum Enterprises, Inc. v. Tag-Board.com Corporation, FA0610000817104 (12/15/2006) and Valiant Trust Company v. Valiant Trust, FA0611000844658 (1/11/2007), and AOL LLC v. Phil Edgell, FA0612000869463 (1/30/2007). This Panel elects to accept that presumption of bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aolmembers.com>, <aolindex.com>, <comaol.com>, <comcnn.com>, <cnnfi.com> and <cnnbc.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: Thursday, February 13, 2007
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