Home Box Office, Inc. v. Bernadette aulestia / TimeW
Claim Number: FA1807001799534
Complainant is Home Box Office, Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, Washington DC. Respondent is Bernadette aulestia / TimeW (“Respondent”), Columbia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hbogola.com.co>, registered with CLICK PANDA SAS.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 31, 2018; the Forum received payment on July 31, 2018.
On August 2, 2018, CLICK PANDA SAS confirmed by e-mail to the Forum that the <hbogola.com.co> domain name is registered with CLICK PANDA SAS and that Respondent is the current registrant of the name. CLICK PANDA SAS has verified that Respondent is bound by the CLICK PANDA SAS 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 August 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2018 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@hbogola.com.co. Also on August 13, 2018, 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 September 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 has used the family of HBO marks in commerce for various broadcasting, media, and entertainment services since at least as early as 1972. Complainant has rights in the HBO (e.g. Reg. No. 1,020,101, registered Sep. 9, 1975) and HBO GO (e.g. Reg. No. 3,788,398, registered May 11, 2010) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). Respondent’s <hbogola.com.co> domain name is identical or confusingly similar to Complainant’s mark as it adds the generic terms “la” and “.com” along with the “.co” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <hbogola.com.co> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain to send emails to consumers under the email address careers@hbogola.com.co as part of a phishing scam. Further, the domain name currently resolves to an inactive website.
Respondent registered and uses the <hbogola.com.co> domain name in bad faith. Respondent uses the domain name to engage in a phishing scam to collect users’ personal information. Further, Respondent does not make any use of the resolving webpage associated with the domain name. Finally, the fact that Complainant’s HBO mark is well known and Respondent wholly incorporated the mark in the domain name demonstrates that Respondent had actual knowledge of Complainant’s rights in the HBO mark prior to registering the at-issue domain name.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <hbogola.com.co> domain name on October 2, 2017.
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.”).
Complainant claims rights in the HBO GO marks (e.g. Reg. No. 3,788,398, registered May 11, 2010) marks through its registration of the mark with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the HBO GO mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <hbogola.com.co> domain name is identical or confusingly similar to Complainant’s mark as it adds the generic terms “la” and “.com” to the HBO GO mark, along with the “.co” ccTLD. Complainant does not explain its allegation that “la” is generic, nor does Respondent refute this. The Panel will accept this unsupported and undisputed allegation in light of the incorporation of the HBO GO mark in its entirely in the disputed domain name. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD). The Panel therefore finds that the <hbogola.com.co> domain name is confusingly similar to the HBO GO mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in the <hbogola.com.co> domain name. Where a response is lacking, relevant information includes the WHOIS 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 “Bernadette aulestia / TimeW” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the HBO GO mark. Panels may use such assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1620789 (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 domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <hbogola.com.co> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as it attempts to phish for information from consumers via email. Complainants may use phishing attempts to evince a lack of any bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a printout of a blog, “Trabajo y Empleo Falsos,” which shows an anonymous person detailing an alleged fraudulent email scheme using the disputed domain name. As such, the Panel holds that Respondent’s phishing scheme does not confer rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶ 4(b) elements, the Panel will therefore consider Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant argues that Respondent uses the disputed domain name to fraudulently send emails to Complainant’s customers in hopes of receiving personal or financial information. Phishing scheme through fraudulent email communications can evince bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). As noted above, Complainant provides a printout of a blog, “Trabajo y Empleo Falsos,” which shows an anonymous person detailing an alleged fraudulent email scheme using the disputed domain name. The Panel agrees that Respondent’s apparent phishing scheme does not amount to any good faith use under the Policy.
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the HBO GO mark at the time of registering the infringing domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince 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 the fact that Respondent wholly incorporated the mark in the disputed domain name demonstrates that Respondent had actual knowledge of Complainant’s rights in the HBO GO mark prior to registering the domain name. The Panel agrees with Complainant and infers that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Thus, Complainant has also 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 <hbogola.com.co> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: September 20, 2018
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