DECISION

 

Warner Bros. Entertainment Inc. v. Chelsea Volz / Nate and Serena

Claim Number: FA1609001695837

PARTIES

Complainant is Warner Bros. Entertainment Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA.  Respondent is Chelsea Volz / Nate and Serena (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

 

The domain names at issue are <warnerbrostelevision.com>, <warnerbrotherstv.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Hon. Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 28, 2016; the Forum received payment on September 28, 2016.

 

On September 29, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <warnerbrostelevision.com>, <warnerbrotherstv.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 September 30, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 2016 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@warnerbrostelevision.com, postmaster@warnerbrotherstv.com.  Also on September 30, 2016, 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 October 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant registered its WARNER BROS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,026,466, registered Dec. 2, 1975), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <warnerbrostelevision.com> and <warnerbrotherstv.com> domain names are confusingly similar to Complainant’s mark because they include either “tv” or “television” which are terms descriptive of Complainant’s business, and the omission of a space plus a generic top-level domain (“gTLD”). The misspelling of BROS as “brothers” in the <warnerbrotherstv.com> domain name also does nothing to distinguish the domain name from Complainant’s mark.

 

Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not granted Respondent any sort of permission to use its WARNER BROS mark, and the Respondent is not commonly known as either of the disputed domain names. Respondent is attempting to impersonate Complainant and has used the confusingly similar domain name for its email suffix. Such use cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).

 

Respondent has registered and is using the <warnerbrostelevision.com> and <warnerbrotherstv.com> domain names in bad faith. Along with the multiple infringing domains in this case, Respondent has registered numerous other domains that infringe on third-party’s marks. This indicates a pattern of bad faith registration under Policy ¶ 4(b)(ii). Respondent is also disrupting Complainant’s business under Policy ¶ 4(b)(iii), when it used the email suffix of  <warnerbrostelevision.com> to fraudulently impersonate one of Complainant’s executives.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

Preliminary Issue: Identity Theft

 

On several occasions, dating from September 30, 2016–October 7, 2016, the Forum received email communications from Respondent stating that she had no knowledge of where the domain names came from, who purchased them, or why the actual registrant is using Respondent’s name to do anything with them. 

 

According to Forum Supplemental Rule 15(b), “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” (emphasis added).  Rule 1 defines “respondent” as “the holder of a domain-name registration against which a complaint is initiated;” and Forum Supplemental Rule 1(d) further defines “the holder of a domain-name registration” as “the single person or entity listed in the WHOIS registration information at the time of commencement.”  The Panel notes precedent which holds the registrar-confirmed registrant of a disputed domain (per the WHOIS at commencement of the proceeding) the proper respondent, notwithstanding the possibility that said respondent’s identity was stolen.  See, e.g., Banco Bradesco S/A v. Gisele Moura Leite, D2014-0414 (WIPO Apr. 30, 2014). 

 

In this case, neither Complainant nor Respondent have requested redaction of Respondent’s name, therefore, no redaction will be made.

 

Preliminary Issue: Consent to Transfer

 

The Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Correspondence—Respondent.” (Received Sept. 30, 2016.)  In this document, Respondent consents to transfer the <warnerbrostelevision.com> and <warnerbrotherstv.com> domain names to Complainant.  However, after the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending.  The Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant, the Panel will forego the traditional UDRP analysis and order an immediate transfer of the <warnerbrostelevision.com> and <warnerbrotherstv.com> domain names.  See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

 

DECISION

 

The Respondent having consented to the transfer of the <warnerbrostelevision.com> and <warnerbrotherstv.com> domain names, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the<warnerbrostelevision.com> and <warnerbrotherstv.com> domain names be TRANSFERRED from Respondent to Complainant

__________________________________________________________________

Hon. Karl V. Fink (Ret.) Panelist

Dated: November 8, 2016