Time Warner Inc. v. Zone MP3
Claim Number: FA0706001008035
Complainant is Time Warner Inc. (“Complainant”), represented by James
R. Davis of Arent Fox LLP, 1050 Connecticut Avenue,
NW, Washington, DC 20036. Respondent
is Zone
MP3 (“Respondent”), 723 1st S.W.,
Drumheller, AB T0J0Y4,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <cartoonneworck.com>, <www-cartoonnetwork.com>, <moneymagizine.com> and <timemagazin.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 13, 2007; the National Arbitration Forum received a hard copy of the Complaint June 14, 2007.
On June 14, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <cartoonneworck.com>, <www-cartoonnetwork.com>, <moneymagizine.com> and <timemagazin.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 5, 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@cartoonneworck.com, postmaster@www-cartoonnetwork.com, postmaster@moneymagizine.com and postmaster@timemagazin.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 11, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain names that Respondent registered, <cartoonneworck.com> and <www-cartoonnetwork.com>, are confusingly similar to Complainant’s CARTOON NETWORK mark. The disputed <moneymagizine.com> domain name is confusingly similar to Complainant’s MONEY mark and <timemagazin.com> is confusingly similar to Complainant’s TIME mark.
2. Respondent has no rights to or legitimate interests in the <cartoonneworck.com>, <www-cartoonnetwork.com>, <moneymagizine.com> and <timemagazin.com> domain names.
3. Respondent registered and used the <cartoonneworck.com>, <www-cartoonnetwork.com>, <moneymagizine.com> and <timemagazin.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Time Warner Inc., is a leading media and entertainment company. In connection with the provision of goods and services, Complainant registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”), including the CARTOON NETWORK mark (Reg. No. 1,798,899 issued October 12, 1993), the TIME mark (Reg. No. 629,122 issued June 19, 1956) and the MONEY mark (Reg. No. 1,001,798 issued January 14, 1975).
Respondent registered the <cartoonneworck.com> domain name February 11, 2004, the <www-cartoonnetwork.com> domain name June 14, 2004. the <moneymagizine.com> domain name February 17, 2004 and the <timemagazin.com> domain name January 5, 2004. Based on other registrations, Respondent has accumulated a demonstrable pattern of adverse UDRP decisions. The disputed domain names resolve to websites featuring pop-up advertisements that promote both Complainant’s products and the products of others, as well as links to third-party websites.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established with extrinsic proof in this proceeding that it has rights in the CARTOON NETWORK, TIME and MONEY marks through registration of the marks with the USPTO. The Panel finds that Complainant’s registration of the marks with the USPTO sufficiently establishes rights in the marks pursuant to Policy ¶ 4(a)(i). 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 ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that complainant demonstrated rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
The disputed domain name that Respondent registered, <cartoonneworck.com>, closely resembles
Complainant’s CARTOON NETWORK mark, differing only by the omission of the
letter “t,” as well as the addition of both the letter “c” and the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that the omission of a letter, as well as the addition of an extra
letter and a gTLD, makes the domain name confusingly similar to the mark
pursuant to Policy ¶ 4(a)(i). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical to or confusingly
similar); see also Am.Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding
that the respondent’s domain name, <americanonline.com>, is confusingly
similar to the complainant’s famous
Complainant contends that the <www-cartoonnetwork.com> domain name is confusingly similar to its CARTOON NETWORK mark. The disputed domain name contains Complainant’s mark in its entirety and merely places “www” and a hyphen as a prefix to the mark. The use of “www” followed by a hyphen (or “www dash”) is merely a slight modification of the customary “www” followed by a period (or “www dot”) prefix found before most domain names. The Panel finds that use of the “www dash” prefix does nothing to distinguish the disputed domain name from Complainant’s mark that is fully contained within the disputed domain name. Thus the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. EOS1/EOS1, Inc., FA 493110 (Nat. Arb. Forum July 15, 2005) (finding the <www-sony.com> domain name to be confusingly similar to the SONY mark); see also Amazon.com v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2, 2005) (finding the <www-amazon.com> domain name to be confusingly similar to the AMAZON mark).
The disputed <moneymagizine.com> domain name contains Complainant’s MONEY mark in its entirety and adds the term “magizine,” a misspelled version of the term “magazine,” which obviously is intended to relate to Complainant’s business, as well as the gTLD “.com.” The Panel finds that addition of a generic or descriptive term and a gTLD to a protected mark evinces confusing similarity of the domain name to the mark pursuant to Policy ¶ 4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Lastly, the <timemagazin.com> domain name contains Complainant’s TIME mark and adds the term “magazin,” also a misspelled version of the term “magazine,” which obviously is intended to relate to Complainant’s business as well as the gTLD “.com.” The Panel finds that addition of a generic or descriptive term and a gTLD to Complainant’s TIME mark fails to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has
rights to and legitimate interests in the marks contained within the disputed
domain names. Complainant asserts that
Respondent has no such rights or interests.
Where Complainant has made a prima
facie case in support of its allegations, the burden shifts to Respondent
to set forth evidence indicating that it has rights or legitimate interests in
accordance with Policy ¶ 4(a)(ii). See SEMCO Prods., LLC v. dmg world media (
The Panel finds that this Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s disputed domain names resolve to websites featuring pop-up advertisements and links to third-party websites. The Panel finds that Respondent’s use 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 pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
An examination of Respondent’s WHOIS registration information indicates that the registrant of the disputed domain names is “Zone MP3.” No information indicating that Respondent is commonly known by the disputed domain names exists on the record. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The disputed <cartoonneworck.com>, <www-cartoonnetwork.com>, <moneymagizine.com> and <timemagazin.com> domain names are all examples of typosquatting, a process in which a domain name registrant attempts to register a confusingly similar domain name that differs from a protected mark only slightly by taking advantage of common typing errors. The Panel finds that Respondent’s practice of typosquatting demonstrates a lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Complainant asserts that Respondent acted in bad faith in
registering and using domain names that are confusingly similar to
Complainant’s protected marks.
Furthermore, Respondent has established a pattern of such registrations,
leading to many adverse panel decisions relating to its infringing attempts to
register confusingly similar domain names.
See, e.g., State Farm Mut. Auto. Ins. Co. v. Zone MP3, FA 523318 (Nat. Arb. Forum Sept. 9,
2005); Twenty Ones Inc. NY Corp. v. MP3
Zone, D2006-1553 (WIPO Feb. 12, 2007).
The Panel finds that Respondent’s demonstrated pattern of registering
confusingly similar domain names illustrates registration and use in bad faith
pursuant to Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson,
FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering
domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent
previously registered domain names incorporating well-known third-party
trademarks); see also Stevens
v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent
Complainant from reflecting its mark in a corresponding domain name through a
pattern of such conduct evidences bad faith registration and use of a domain
name pursuant to Policy 4(b)(ii).”).
Presumably, Respondent receives income from its diversionary use of the disputed domain names. Unwary Internet users, seeking information about Complainant’s businesses, are likely to become confused as to the source and affiliation of the resulting websites. The Panel finds that such use indicates registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where respondent misspelled complainant’s famous mark to attract Internet users to a series of advertisements).
As indicated above, Respondent’s use of the disputed domain names constitutes typosquatting. The Panel finds that typosquatting amounts to registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ … through Respondent’s persistent practice of ‘typosquatting’”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cartoonneworck.com>, <www-cartoonnetwork.com>, <moneymagizine.com> and <timemagazin.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 25, 2007.
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