Time Warner Inc. v. Administrador de dominios / Abadaba S.A.
Claim Number: FA1702001716436
Complainant is Time Warner Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, Washington D.C., USA. Respondent is Administrador de dominios / Abadaba S.A. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwtimewarner.com>, registered with Naugus Limited LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2017; the Forum received payment on February 7, 2017.
On February 13, 2017, Naugus Limited LLC confirmed by e-mail to the Forum that the <wwwtimewarner.com> domain name is registered with Naugus Limited LLC and that Respondent is the current registrant of the name. Naugus Limited LLC has verified that Respondent is bound by the Naugus Limited 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 February 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2017 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@wwwtimewarner.com. Also on February 13, 2017, 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 March 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
Complainant registered the TIME WARNER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,816,474, registered Jan. 11, 1994) and in Panama (e.g., Reg. No. 150,593, registered Apr. 25, 2006). See Compl., at Attached Annex D. Respondent’s <wwwtimewarner.com> mark is confusingly similar as it merely adds the letters “www” before the entire TIME WARNER mark the generic top-level domain “.com” (“gTLD”).
Respondent has no rights or legitimate interests in <wwwtimewarner.com>. Respondent is not commonly known by the TIME WARNER mark, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use the mark in a domain name. Respondent also doesn’t use the disputed domain for any bona fide offering of goods or services because the domain name directs the user to a generic website with generic links to third-party websites in direct competition with Complainant, presumably receiving pay-per-click fees. See Compl., at Attached Annex E.
Respondent registered and uses the <wwwtimewarner.com> in bad faith. Respondent uses the disputed domain name to generate revenue via pay-per-click fees while redirecting users to websites in direct competition with Complainant. Additionally, Respondent engages in typosquatting by removing the period in Complainant’s registered domain name www.timewarner.com, registered in 1994. Additionally, Respondent has engaged in serial cybersquatting, with over 1,325 registered domain names using famous trademarks. See Compl., at Attached Annex F. Finally, Respondent must have had actual or constructive knowledge of Complainant’s mark because the TIME WARNER mark has a strong reputation and a presence worldwide.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a famous United States company that is engaged in the provision of entertainment and related goods and services.
2. Complainant registered the TIME WARNER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,816,474, registered Jan. 11, 1994) and in Panama (e.g., Reg. No. 150,593, registered Apr. 25, 2006).
3. Respondent registered the <wwwtimewarner.com> domain name on May 6, 2002.
4. The domain name directs the user to a generic website with generic links to third-party websites in direct competition with Complainant.
5. The evidence shows that Respondent is a serial cybersquatter and regularly acts in bad faith towards trademark owners.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant is an international company which continuously engages in commerce for providing entertainment and related goods and services. Complainant began engaging in this business around the year 1992. Complainant claims it registered the TIME WARNER mark with the USPTO (e.g., Reg. No. 1,816,474, registered Jan. 11, 1994) and in Panama (e.g., Reg. No. 150,593, registered Apr. 25, 2006). See Compl., at Attached Annex D. Panels have consistently held that registration of a mark with the multiple governmental agencies sufficiently establishes a registrant’s rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Therefore, the Panel finds that Complainant has established rights in the TIME WARNER mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TIME WARNER mark. Complainant argues that Respondent’s <wwwtimewarner.com> domain name is confusingly similar as it adds three letters, “www” at the beginning and the gTLD “.com”. Past Panels have found these changes do not sufficiently distinguish a domain name from a trademark. See Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum Jan. 18, 2016) (concluding that the addition of “www” takes advantage of a common typing error, and does not distinguish the domain name from the mark or overcome a finding of confusingly similar). Similarly, Panels have held that adding the gTLD “.com” does not constitute a sufficient difference. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Respondent added the letters “www” to the TIME WARNER mark along with the gTLD “.com.”
Therefore, the Panel finds that Respondent has not included elements in the domain name that would provide sufficient distinction from Complainant’s mark under Policy ¶ 4(a)(i). Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TIME WARNER mark and has used it in its entirety in the <wwwtimewarner.com> domain name, adding only the three additional letters “www” at the beginning of the domain name;
(b) Respondent has caused the domain name to be directed to a generic website with generic links to third-party websites in direct competition with Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant contends that Respondent is not commonly known by the domain name and hence has no rights or legitimate interests in the <wwwtimewarner.com> domain name. Where a response is lacking, as in this case, relevant information to resolve this issue includes the WHOIS record and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Naugus Limited, LLC” as the registrant. See Compl., at Attached Annex A. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the TIME WARNER mark. Panels may use these submissions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by <wwwtimewarner.com> under Policy ¶ 4(c)(ii);
(e) Complainant further submits that Respondent’s actions do not constitute a bona fide offering of goods or services because Respondent, likely seeking pay-per-click fees, directs users to websites in direct competition with the services offered by Complainant. Prior Panels have concluded that this conduct demonstrates lack of a bona fide offering of goods or services. See Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services). Complainant offers that the disputed domain name directs users to a generic website with generic links to third-party websites in direct competition with Complainant, including site names “Cable TV” and <Time Warner Deals>. See Compl., at Attached Annex E. Respondent presumably does this to receive pay-per-click fees. The Panel therefore finds that Respondent has not used the disputed domain name for a bona fide offering of goods or services.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent has engaged in serial cybersquatting. Complainant contends that Respondent has registered well over one thousand domain names, all confusingly similar to famous companies. See Compl., at Attached Annex F. Some of the trademarks infringed are ADIDAS, AMERICAN EXPRESS, AMWAY, BLACKBERRY, DOW JONES and FACEBOOK. Panels consider the facts surrounding each alleged pattern of domain registrations, and have traditionally seen bad faith findings in prior UDRP decisions or registration of multiple domain names in the same dispute as evidence of Policy ¶ 4(b)(ii) bad faith. See Bed Bath & Beyond Procurement Co. Inc. (N/K/A Liberty Procurement Co. Inc.) v. PPA Media Services / Ryan G Foo, FA1307001510619 (Forum Oct. 9, 2013) (finding that the respondent’s negative involvement in at least three prior UDRP proceedings and the respondent’s registration of twenty-four domain names in the instant proceeding demonstrated a pattern and practice of bad faith domain name registration pursuant to Policy ¶ 4(b)(ii)). In the present case, the domain names listed at Complainant’s Attached Exhibit F have not been involved in UDRP proceedings as of yet, and have therefore not been determined to have infringed the rights third parties have in certain marks. Nevertheless this conduct of Respondent shows that its modus operandi includes a lack of proper recognition of the intellectual property rights of Complainant and others. In any event Complainant has also adduced evidence at Attached Exhibit G of adverse UDRP findings against Respondent concerning trademarks such as 1-800-FLOWERS, ALLSTATE, FOX SPORTS, FOX FANTASY FOOTBALL, HOME DEPOT and TRAVELOCITY. The Panel takes all of these matters into account and finds Respondent has been consistently guilty of bad faith conduct under Policy ¶ 4(b)(ii) and is a serial cybersquatter.
Secondly, Complainant contends that Respondent uses the disputed domain name to benefit commercially from pay-per-click fees and redirecting users to websites in direct competition with Complainant. Prior Panels have found this behavior to constitute bad faith. See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant, as claimed earlier, says that Respondent offers links to competitors on the disputed domain name in attempts to benefit commercially from the pay-per-click fees. See Compl., at Attached Annex E. The Panel finds find that Respondent conduct here constitutes bad faith.
Thirdly, Complainant next argues that Respondent’s actions constitute typosquatting, also showing bad faith. Typosquatting in this manner can evince bad faith registration and use. See Black & Decker Corp. v. Khan, FA 137223 (Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith). Here, Respondent fully used the TIMEWARNER mark and omitted a period from the subdomain “www.”. Thus, the Panel finds that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Fourthly, Complainant claims that Respondent had actual or constructive knowledge of Complainant’s mark. Panels have generally disregarded arguments of bad faith based on constructive notice. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the TIME WARNER mark because it has a strong reputation and a presence worldwide. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the TIME WARNER mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwtimewarner.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 20, 2017
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