Time Warner Inc. v. Lu Zhen
Claim Number: FA1706001738189
Complainant is Time Warner Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie, District of Columbia, U.S.A. Respondent is Lu Zhen (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <timewarner.studio>, <warnerbros.pro>, <warnerbros.group>, <warnerbros.live>, <warnerbros.work>, <warnerbros.pub>, <warnerbros.wang>, <warnerbros.red>, <warnerbros.market>, <warnerstars.online>, <warnermurdoch.ren>, and <warnerstars.space>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2017; the Forum received payment on June 30, 2017. The Complaint was submitted in both Simplified Chinese and English.
On July 6, 2017, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <timewarner.studio>, <warnerbros.pro>, <warnerbros.group>, <warnerbros.live>, <warnerbros.work>, <warnerbros.pub>, <warnerbros.wang>, <warnerbros.red>, <warnerbros.market>, <warnerstars.online>, <warnermurdoch.ren>, and <warnerstars.space> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 July 10, 2017, the Forum served the Simplified Chinese language Complaint and all Annexes, including a Simplified Chinese Written Notice of the Complaint, setting a deadline of July 31, 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@timewarner.studio, postmaster@warnerbros.pro, postmaster@warnerbros.group, postmaster@warnerbros.live, postmaster@warnerbros.work, postmaster@warnerbros.pub, postmaster@warnerbros.wang, postmaster@warnerbros.red, postmaster@warnerbros.market, postmaster@warnerstars.online, postmaster@warnermurdoch.ren, and postmaster@warnerstars.space. Also on July 10, 2017, the Simplified Chinese 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 August 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 provides entertainment goods and services under the TIME WARNER and WARNER BROS marks, both of which were registered in the United States in 1994 and 1959, respectively. The marks are also registered elsewhere around the world and they are famous.
Complainant alleges that the disputed domain names are confusingly similar to its marks because each disputed domain name incorporates at least one of the marks in its entirety and, for two of the domain names, merely adds the descriptive terms “stars”, and for one of the domain names the name “murdoch” (Rupert Murdoch is a well-known businessman who made an offer to buy Complainant). Further, the disputed domain names add top-level domains (“gTLD”), such as “studio,” “pro,” “group,” “live,” “work,” “pub,” “wang,” “red,” “market,” “online,” “ren,” and “space.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is neither commonly known by the disputed domain names nor has Complainant authorized Respondent to use its marks. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. In fact, none of the disputed domain names even resolve to active websites. Furthermore, Complainant’s marks are so well known that the only plausible inference that can be derived from Respondent’s use of those marks is that Respondent is attempting to trade on the goodwill associated with Complainant’s marks. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered, and is using, the disputed domain names in bad faith. First, Respondent is inactively holding the disputed domain names. Second, Respondent has engaged in a pattern of bad faith registration by registering twelve domain names that all infringe on Complainant’s marks. Third, Respondent registered the disputed domain names with knowledge of Complainant’s marks. The Panel should infer Respondent’s actual knowledge from the notoriety of Complainant’s marks. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks TIME WARNER and WARNER BROS, with rights dating back to at least 1994. The marks are famous.
The domain name <timewarner.studio> was registered on March 9, 2017; the domain names <warnerbros.pro>, <warnerbros.group>, <warnerbros.live>, <warnerbros.work>, <warnerbros.pub>, <warnerbros.wang>, and <warnerbros.red> were registered on April 23, 2017; the domain names <warnerbros.market> and <warnerstars.online> were registered on October 12, 2016; the domain name <warnermurdoch.ren> was registered on September 10, 2017; and the domain name <warnerstars.space> was registered on October 12, 2016.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain names are not being used.
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.”).
Prior to discussing the three elements of the Policy, the Panel must decide on the language of the proceedings. The Registration Agreement is written in Simplified Chinese, thereby making the language of the proceedings Simplified Chinese.
Pursuant to UDRP Rule 11(a), the Panel has the authority determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In the present case, Respondent has received the Complaint and Commencement Notification in Simplified Chinese and has chosen not to respond to the Complaint. Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
The disputed domain names are confusingly similar to Complainant’s marks because each disputed domain name incorporates at least one of the marks in its entirety and merely adds generic or descriptive terms as the top-level domains, such as “studio,” “pro,” “group,” “live,” “work,” “pub,” “wang,” “red,” “market,” “online,” “ren,” and “space.” The addition of a descriptive top-level domain not only fails to eliminate confusing similarity, but, if the descriptive top-level domain is the only addition to a mark, the domain name remains identical mark. See DD IP Holder LLC v. Phill Aspden, FA 1603215 (Forum Apr. 8, 2015) (finding that the disputed domain name <dunkin.coffee> is identical to Complainant's DUNKIN COFFEE registered mark, as gTLDs that reference goods or services offered under the registered mark may be taken into account). In two of the disputed domain names, the descriptive term “stars” is added to the mark; in one of the disputed domain names, the name “murdoch” is added to the mark (Rupert Murdoch is a well-known businessman who made an offer to buy Complainant). Adding a word that refers to Complainant’s business, e.g. “stars” or “murdoch”, cannot distinguish a mark from a domain name. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (ForumAug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). Therefore, the Panel finds that the disputed domain names are all identical or confusingly similar to Complainant’s marks in the sense of the Policy.
Respondent has no rights or legitimate interests in the disputed domain name as required by Policy ¶ 4(a)(ii). Complainant has neither authorized nor licensed Respondent’s use of Complainant’s marks. Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the Panel notes that the WHOIS information concerning the disputed domain names identifies “Lu Zhen” as the registrant, which provides no evidence that Respondent is commonly known by the domain name. As such, the Panel finds that Respondent is not commonly known by, and thus lacks rights and legitimate interests in, the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Respondent is not using the disputed domain names: thus he is not making a bona fide offering of goods or services or a legitimate non commercial or fair use of the disputed domain names pursuant to the Policy. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark 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 of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
The disputed domain names are not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademarks are very well known. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”).
There has been no response to the Complaint. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Further, Respondent has engaged in a pattern of bad faith registration, which is indicative of bad faith registration. See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum February 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Since there are twelve domain names at issue in this proceeding, and each of them infringes on Complainant’s rights, the Panel finds that the infringing domain names were registered in bad faith under Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <timewarner.studio>, <warnerbros.pro>, <warnerbros.group>, <warnerbros.live>, <warnerbros.work>, <warnerbros.pub>, <warnerbros.wang>, <warnerbros.red>, <warnerbros.market>, <warnerstars.online>, <warnermurdoch.ren>, and <warnerstars.space> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 3, 2017
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