Time Warner Inc. v. Tan Kim Fong a/k/a Nadeem Qadir a/k/a Dotsan a/k/a R.S. Potdar a/k/a NA NA
Claim Number: FA1104001384739
Complainant is Time Warner Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington D.C., USA. Respondent is Tan Kim Fong a/k/a Nadeem Qadir a/k/a Dotsan a/k/a R.S. Potdar a/k/a NA NA (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <timelifemagazine.com>, <golfmagizine.com>, <realsimplemagazine.com>, <teenpeoplemag.com>, and <harrtpotter.com>, registered with Dotregistrar, LLC
The domain names at issue are <cnnsportsillustrated.com>, <cnnnew.com>, <cnnsisports.com>, <wwwcnnnews.com>, <divasonlineathbo.com>, and <harrypotterthemovie.com>, registered with Enom, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2011; the National Arbitration Forum received payment on April 19, 2011.
On April 20, 2011, Dotregistrar, LLC confirmed by e-mail to the National Arbitration Forum that the <timelifemagazine.com>, <golfmagizine.com>, <realsimplemagazine.com>, <teenpeoplemag.com>, and <harrtpotter.com> domain names are registered with Dotregistrar, LLC and that Respondent is the current registrant of the names. Dotregistrar, LLC has verified that Respondent is bound by the Dotregistrar, LLC 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 April 20, 2011, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <cnnsportsillustrated.com>, <cnnnew.com>, <cnnsisports.com>, <wwwcnnnews.com>, <divasonlineathbo.com>, and <harrypotterthemovie.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 April 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2011 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@cnnsportsillustrated.com, postmaster@cnnnew.com, postmaster@cnnsisports.com, postmaster@wwwcnnnews.com, postmaster@timelifemagazine.com, postmaster@golfmagizine.com, postmaster@realsimplemagazine.com, postmaster@teenpeoplemag.com, postmaster@divasonlineathbo.com, postmaster@harrypotterthemovie.com, postmaster@harrtpotter.com. Also on April 26, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" 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 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. Respondent’s <cnnsportsillustrated.com>, <cnnnew.com>, <cnnsisports.com>, and <wwwcnnnews.com> domain names are confusingly similar to Complainant’s CNN mark.
Respondent’s <timelifemagazine.com> domain name is confusingly similar to Complainant’s TIME LIFE mark.
Respondent’s <golfmagizine.com> domain name is confusingly similar to Complainant’s GOLF MAGAZINE mark.
Respondent’s <realsimplemagazine.com> domain name is confusingly similar to Complainant’s REAL SIMPLE mark.
Respondent’s <teenpeoplemag.com> domain name is confusingly similar to Complainant’s TEEN PEOPLE mark.
Respondent’s <divasonlineathbo.com> domain name is confusingly similar to Complainant’s HBO mark.
Respondent’s <harrypotterthemovie.com> and <harrtpotter.com> domain names are confusingly similar to Complainant’s HARRY POTTER mark.
2. Respondent does not have any rights or legitimate interests in the <cnnsportsillustrated.com>, <cnnnew.com>, <cnnsisports.com>, <wwwcnnnews.com>, <timelifemagazine.com>, <golfmagizine.com>, <realsimplemagazine.com>, <teenpeoplemag.com>, <divasonlineathbo.com>, <harrypotterthemovie.com>, and <harrtpotter.com> domain names.
3. Respondent registered and used the <cnnsportsillustrated.com>, <cnnnew.com>, <cnnsisports.com>, <wwwcnnnews.com>, <timelifemagazine.com>, <golfmagizine.com>, <realsimplemagazine.com>, <teenpeoplemag.com>, <divasonlineathbo.com>, <harrypotterthemovie.com>, and <harrtpotter.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant provides media and entertainment services under its various trademarks. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its CNN (e.g., Reg. No. 1,597,839 issued May 22, 1990), SPORTS ILLUSTRATED (e.g., Reg. No. 754,203 issued August 6, 1963), TIME LIFE (e.g., Reg. No. 2,359,687 issued June 20, 2000), GOLF MAGAZINE (e.g., Reg. No. 1,521,775 issued January 24, 1989), REAL SIMPLE (e.g., Reg. No. 2,470,211 issued July 17, 2001), TEEN PEOPLE (e.g., Reg. No. 3,087,729; filed May 27, 2005; issued May 2, 2006), HBO (e.g., Reg. No. 1,020,1001 issued September 9, 1975), and HARRY POTTER marks (e.g., Reg. No. 2,450,787 issued May 15, 2001).
Respondent registered the <cnnsportsillustrated.com>, <cnnnew.com>, <cnnsisports.com>, and <wwwcnnnews.com> domain names no later than December 11, 2000. Respondent registered the <timelifemagazine.com> domain name on December 5, 2001 and the <golfmagizine.com> domain name on May 15, 2002. Respondent registered the <realsimplemagazine.com>, <teenpeoplemag.com>, and <divasonlineathbo.com> domain names on May 5, 2002, April 9, 2002, and September 20, 2000 respectively. Respondent registered the <harrypotterthemovie.com> and <harrtpotter.com> domain names on October 29, 2001 and November 16, 2001 respectively. The <cnnsportsillustrated.com> domain name fails to resolve to an active website. The <cnnsisports.com>, <timelifemagazine.com>, <golfmagizine.com>, and <realsimplemagazine.com> domain names resolve to a third-party website (<magazines.com>) that sells Complainant’s and Complainant’s competitors’ magazines. The <teenpeoplemag.com>, <cnnnew.com>, <wwwcnnnews.com>, <harrypotterthemovie.com>, and <harrtpotter.com> domain names resolve to a third-party search engine website (<usseek.com>) which displays hyperlinks to competing third-party websites. The <divasonlineathbo.com> domain name resolves to an adult-oriented website.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel determines that Complainant has presented sufficient evidence that the entities that control the disputed domain names are in fact a single entity.
Complainant provides evidence of USPTO trademark registrations for its CNN (e.g., Reg. No. 1,597,839 issued May 22, 1990), SPORTS ILLUSTRATED (e.g., Reg. No. 754,203 issued August 6, 1963), TIME LIFE (e.g., Reg. No. 2,359,687 issued June 20, 2000), GOLF MAGAZINE (e.g., Reg. No. 1,521,775 issued January 24, 1989), REAL SIMPLE (e.g., Reg. No. 2,470,211 issued July 17, 2001), TEEN PEOPLE (e.g., Reg. No. 3,087,729; filed May 27, 2005; issued May 2, 2006), HBO (e.g., Reg. No. 1,020,1001 issued September 9, 1975), and HARRY POTTER marks (e.g., Reg. No. 2,450,787 issued May 15, 2001). The Panel finds Complainant has established sufficient evidence under Policy ¶ 4(a)(i) that it owns rights in the CNN, SPORTS ILLUSTRATED, TIME LIFE, GOLF MAGAZINE, REAL SIMPLE, HBO, and HARRY POTTER marks. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel further determines that Complainant has established rights in its TEEN PEOPLE mark dating back to May 27, 2005. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”).
Complainant contends that it owns common law rights in its TEEN PEOPLE mark dating back to December 31, 1998. Complainant’s trademark registration with the USPTO (e.g., Reg. No. 3,087,729; filed May 27, 2005; issued May 2, 2006) lists December 31, 1998 as the first use date for the TEEN PEOPLE mark. Complainant asserts that it registered the domain name <teenpeople.com> and provides the WHOIS information which lists Complainant’s affiliate as the owner of the domain name and also lists July 29, 1997 as the creation date. The Panel finds Complainant has presented sufficient evidence of common law rights for its TEEN PEOPLE mark dating back to December 31, 1998. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant claims Respondent’s <cnnsportsillustrated.com>, <cnnnew.com>, <cnnsisports.com>, and <wwwcnnnews.com> domain names are confusingly similar to Complainant’s CNN mark. The disputed domain names contain Complainant’s entire CNN mark and combine the mark with Complainant’s SPORTS ILLUSTRATED mark, the generic term “new,” the letters “si” and the generic term “sports,” or the “www” prefix and the descriptive term “news.” All of the disputed domain names feature the generic top-level domain (“gTLD”) “.com.” The Panel finds that the combination of two marks, the addition of a generic term, the addition of letters, the addition of the “www” prefix, the addition of a descriptive term, and the addition of a gTLD all fail to sufficiently distinguish a disputed domain name from a complainant’s mark. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also 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. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. 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). Thus, the Panel concludes that Respondent’s <cnnsportsillustrated.com>, <cnnnew.com>, <cnnsisports.com>, and <wwwcnnnews.com> domain names are confusingly similar to Complainant’s CNN mark under Policy ¶ 4(a)(i).
Respondent’s <timelifemagazine.com> domain name contains Complainant’s TIME LIFE mark, absent the spaces, and simply adds the descriptive term “magazine” and the gTLD “.com.” As noted above, the additions of a descriptive term and a gTLD fail to distinguish the disputed domain name. See supra Kohler Co. v. Curley; see also supra Reese v. Morgan. Moreover, the removal of a space is inconsequential to a Policy ¶ 4(a)(i) analysis because spaces are impermissible in a domain name. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <timelifemagazine.com> domain name is confusingly similar to Complainant’s TIME LIFE mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <golfmagizine.com> domain name is confusingly similar to Complainant’s GOLF MAGAZINE mark. Respondent removes the space from Complainant’s mark, exchanges the letter “a” for the letter “I,” and adds the gTLD “.com.” The Panel finds that these additions fail to sufficiently distinguish the disputed domain names from Complainant’s mark. See supra Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs.; see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also supra Reese v. Morgan. Consequently, the Panel holds that Respondent’s <golfmagizine.com> domain name is confusingly similar to Complainant’s GOLF MAGAZINE mark pursuant to Policy ¶ 4(a)(i).
In Respondent’s <realsimplemagazine.com> domain name, Respondent combined Complainant’s REAL SIMPLE mark, absent the space, with the descriptive term “magazine” and the gTLD “.com.” Based on past precedent, the Panel concludes that Respondent’s <realsimplemagazine.com> domain name is confusingly similar to Complainant’s REAL SIMPLE mark pursuant to Policy ¶ 4(a)(i). See supra Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs.; see also supra Kohler Co. v. Curley; see also supra Reese v. Morgan.
Complainant contends that Respondent’s <teenpeoplemag.com> domain name is confusingly similar to Complainant’s TEEN PEOPLE mark. The disputed domain name contains Complainant’s entire mark after removing the space and adds the descriptive term “mag” and the gTLD “.com.” The Panel determines that these alterations do not sufficiently distinguish the disputed domain name. See supra Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs.; see also supra Kohler Co. v. Curley; see also supra Reese v. Morgan. The Panel concludes that Respondent’s <teenpeoplemag.com> domain name is confusingly similar to Complainant’s TEEN PEOPLE mark under Policy ¶ 4(a)(i).
Respondent’s <divasonlineathbo.com> domain name contains Complainant’s HBO mark and simply adds the generic terms “divas,” “online,” and “at.” The disputed domain name also contains the gTLD “.com.” The Panel finds Respondent’s additions to Complainant’s mark are insufficient in rendering the disputed domain name not confusingly similar. See supra Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH; see also supra Reese v. Morgan. Thus, the Panel holds that Respondent’s <divasonlineathbo.com> domain name is confusingly similar to Complainant’s HBO mark pursuant to Policy ¶ 4(a)(i).
Complainant avers that Respondent’s <harrypotterthemovie.com> and <harrtpotter.com> domain names are confusingly similar to Complainant’s HARRY POTTER mark. Respondent’s <harrypotterthemovie.com> domain name features Complainant’s entire HARRY POTTER mark and simply removes the space from the mark, adds the generic terms “the” and “movie,” and adds the gTLD “.com.” Based on past panels’ decisions, this Panel concludes that Respondent’s harrypotterthemovie.com> and <harrtpotter.com> domain names are confusingly similar to Complainant’s HARRY POTTER mark pursuant to Policy ¶ 4(a)(i). See supra Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs.; see also supra Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH; see also supra Reese v. Morgan.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 Policy ¶ 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant argues that Respondent is not commonly known by the <cnnsportsillustrated.com>, <cnnnew.com>, <cnnsisports.com>, <wwwcnnnews.com>, <timelifemagazine.com>, <golfmagizine.com>, <realsimplemagazine.com>, <teenpeoplemag.com>, <divasonlineathbo.com>, <harrypotterthemovie.com>, and <harrtpotter.com> domain names. Complainant asserts that it has never authorized Respondent to use any of its marks. The WHOIS information listing the registrants of the domain names is not similar to any of the domain names. Respondent failed to present any evidence in support of a finding that it is commonly known by the domain names, and the Panel fails to find any such evidence in the record. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s <cnnsportsillustrated.com> domain name fails to resolve to an active website. The Panel finds Respondent’s failure to make an active use of the disputed domain name does not constitute 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). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
Respondent’s <cnnsisports.com>, <timelifemagazine.com>, <golfmagizine.com>, and <realsimplemagazine.com> domain names resolve to a third-party website (<magazines.com>) that sells Complainant’s and Complainant’s competitors’ magazines. The Panel determines that Respondent’s use of the disputed domain names to sell competing products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Respondent uses the <teenpeoplemag.com>, <cnnnew.com>, <wwwcnnnews.com>, <harrypotterthemovie.com>, and <harrtpotter.com> domain names to resolve to a third-party search engine website (<usseek.com>) which displays hyperlinks to competing third-party websites. The Panel presumes Respondent profits from click-through fees at the third-party website. Therefore, the Panel determines that Respondent is not making 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). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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 pursuant to Policy ¶ 4(c)(iii)).
Complainant claims that the <divasonlineathbo.com> domain name resolves to an adult-oriented website and provides screen shot evidence of the resolving website. The Panel holds that Respondent’s use of the disputed domain name to resolve to an adult-oriented website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a adult oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)); see also Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to [adult oriented material] is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”).
Complainant contends that Respondent’s <harrtpotter.com> domain name is a classic example of typosquatting. The disputed domain name simply replaces the letter “y” with the letter “t.” On a QWERTY keyboard, the letters “t” and “y” are placed next to each other. The Panel determines that Respondent is attempting to take advantage of Internet users who mistype Complainant’s mark, which constitutes typosquatting. Therefore, the Panel concludes that Respondent’s typosquatting is further evidence that Respondent lacks rights and legitimate interests in the <harrtpotter.com> domain name under Policy ¶ 4(a)(i). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); 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 Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent’s registration and use of the disputed domain names constitutes a pattern of bad faith registration. Respondent has registered the eleven disputed domain names, all of which contain some variation of Complainant’s marks. The Panel finds Respondent’s registration and use of the <cnnsportsillustrated.com>, <cnnnew.com>, <cnnsisports.com>, <wwwcnnnews.com>, <timelifemagazine.com>, <golfmagizine.com>, <realsimplemagazine.com>, <teenpeoplemag.com>, <divasonlineathbo.com>, <harrypotterthemovie.com>, and <harrtpotter.com> domain names constitutes bad faith registration and use under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Complainant contends that the <cnnsisports.com>, <timelifemagazine.com>, <golfmagizine.com>, and <realsimplemagazine.com> domain names resolve to a website that sells magazines that compete with the magazines Complainant produces and sells. Complainant alleges that the <teenpeoplemag.com>, <cnnnew.com>, <wwwcnnnews.com>, <harrypotterthemovie.com>, and <harrtpotter.com> domain names resolve to a website that contains hyperlinks to Complainant’s competitors. The Panel finds that both uses disrupt Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel infers that Respondent commercially benefits from its use of the <cnnsisports.com>, <timelifemagazine.com>, <golfmagizine.com>, <realsimplemagazine.com>, <teenpeoplemag.com>, <cnnnew.com>, <wwwcnnnews.com>, <harrypotterthemovie.com>, <harrtpotter.com>, and <divasonlineathbo.com> domain names, all of which, as this Panel has previously determined, are confusingly similar to Complainant’s marks. The Panel determines that Respondent is attempting to create confusion as to Complainant’s affiliation with the disputed domain names. Thus, the Panel concludes that Respondent has registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).
Moreover, Policy ¶ 4(b) is not an exclusive list of examples of bad faith registration and use of a contested domain name, so that circumstances falling outside the explicit parameters of that provision of the Policy can provide persuasive evidence for a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “indicates that its listing of bad faith factors is without limitation”) (emphasis in original); see also Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)] of the Policy, is not conclusive that the domain name in issue was registered in and is being used in bad faith.”).
Respondent’s <divasonlineathbo.com> domain name resolves to a website containing adult-oriented content. The Panel finds that such a use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a[n] [adult oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).
Respondent fails to make an active use of the <cnnsportsillustrated.com> domain name. The Panel holds that such a failure to make an active use is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
As the Panel has previously determined that Respondent’s use of the <harrtpotter.com> domain name constitutes typosquatting, the Panel further finds that typosquatting is additional evidence that Respondent’s registration and use of the disputed domain name was, and is, in bad faith under Policy ¶ 4(a)(i). See 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’”); see also Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
The Panel finds Policy ¶ 4(a)(i) has been 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 <cnnsportsillustrated.com>, <cnnnew.com>, <cnnsisports.com>, <wwwcnnnews.com>, <timelifemagazine.com>, <golfmagizine.com>, <realsimplemagazine.com>, <teenpeoplemag.com>, <divasonlineathbo.com>, <harrypotterthemovie.com>, <harrtpotter.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 2, 2011
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