Warner Media, LLC v. Gerald Warner / Warner Brothers Group
Claim Number: FA1905001842681
Complainant is Warner Media, LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, United States. Respondent is Gerald Warner / Warner Brothers Group (“Respondent”), Pennsylvania, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <warnermediaincorporated.com>, <warnermediacompanies.com>, <warnermedialtd.com>, <warnermediaglobal.com>, <warnermediapublishing.com>, <warnermultimedia.com>, <warnermediasports.com>, <warnerbrosmediagroup.com>, <warnerbrothersmedia.com>, <warnermediainnovationlab.com>, <warnermediagroupllc.com>, <warnercomix.com>, <warnerbrosmediagroupllc.com>, <warnerbrosemoji.com>, <warnermedianetworks.com>, <warnerbrothersgroup.com>, <warnerbroscomics.com>, <warnermediasystems.com>, <warnernetworkmedia.com>, <warnermediallc.com>, <warnerglobalmedia.com>, <warnercrossmedia.com>, <warnermediatoons.com>, <warnermediaar.com>, <warnermediacartoons.com>, <warnermediacomics.com>, <warnermediacommunications.com>, <warnermediamatrix.com>, <warnermedianetwork.com>, <warnermedianexus.com>, <warnermediavr.com>, <warnertransmedia.com>, <warnersocialmedia.com> registered with GoDaddy.com, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2019; the Forum received payment on May 10, 2019.
On May 13, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <warnermediaincorporated.com>, <warnermediacompanies.com>, <warnermedialtd.com>, <warnermediaglobal.com>, <warnermediapublishing.com>, <warnermultimedia.com>, <warnermediasports.com>, <warnerbrosmediagroup.com>, <warnerbrothersmedia.com>, <warnermediainnovationlab.com>, <warnermediagroupllc.com>, <warnercomix.com>, <warnerbrosmediagroupllc.com>, <warnerbrosemoji.com>, <warnermedianetworks.com>, <warnerbrothersgroup.com>, <warnerbroscomics.com>, <warnermediasystems.com>, <warnernetworkmedia.com>, <warnermediallc.com>, <warnerglobalmedia.com>, <warnercrossmedia.com>, <warnermediatoons.com>, <warnermediaar.com>, <warnermediacartoons.com>, <warnermediacomics.com>, <warnermediacommunications.com>, <warnermediamatrix.com>, <warnermedianetwork.com>, <warnermedianexus.com>, <warnermediavr.com>, <warnertransmedia.com>, <warnersocialmedia.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 May 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2019 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@warnermediaincorporated.com, postmaster@warnermediacompanies.com, postmaster@warnermedialtd.com, postmaster@warnermediaglobal.com, postmaster@warnermediapublishing.com, postmaster@warnermultimedia.com, postmaster@warnermediasports.com, postmaster@warnerbrosmediagroup.com, postmaster@warnerbrothersmedia.com, postmaster@warnermediainnovationlab.com, postmaster@warnermediagroupllc.com, postmaster@warnercomix.com, postmaster@warnerbrosmediagroupllc.com, postmaster@warnerbrosemoji.com, postmaster@warnermedianetworks.com, postmaster@warnerbrothersgroup.com, postmaster@warnerbroscomics.com, postmaster@warnermediasystems.com, postmaster@warnernetworkmedia.com, postmaster@warnermediallc.com, postmaster@warnerglobalmedia.com, postmaster@warnercrossmedia.com, postmaster@warnermediatoons.com, postmaster@warnermediaar.com, postmaster@warnermediacartoons.com, postmaster@warnermediacomics.com, postmaster@warnermediacommunications.com, postmaster@warnermediamatrix.com, postmaster@warnermedianetwork.com, postmaster@warnermedianexus.com, postmaster@warnermediavr.com, postmaster@warnertransmedia.com, postmaster@warnersocialmedia.com.
Also on May 21, 2019, 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.
A timely Response was received and determined to be complete on June 10, 2019.
Additional Submissions were received for Complaint and Respondent respectively on June 14, 2019 and June 15, 2015. Both were received timely per Supplemental Rule 7.
On June 13, 2019, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world’s largest media companies and owns some of the most iconic brands in the entertainment industry: Warner Bros., HBO, CNN, TBS, TNT, Cartoon Network, Adult Swim, and others. Complainant has rights in the WARNER BROS mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,026,466, registered Dec. 2, 1975) and common law rights in the WARNER MEDIA mark. Respondent’s disputed domain names are confusingly similar to Complainant’s WARNER BROS or WARNER MEDIA marks as the disputed domain names wholly incorporate the one of the marks and add generic and/or descriptive terms like “networks,” “comics,” and “publishing,”.
Respondent has no rights or legitimate interests in the disputed domain names as Respondent has no license or authorization to use Complainant’s WARNER BROS or WARNER MEDIA marks. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use as the disputed domain names resolve to either inactive sites or parked pages.
Respondent registered and used the disputed domain names in bad faith as evidenced by Respondent’s registration of at least 33 domain names wholly incorporating Complainant’s WARNER BROS and WARNER MEDIA marks, showing a pattern of bad faith registrations. Additionally, Respondent fails to actively use the disputed domain names and is instead warehousing them. Furthermore, based on the fame of the WARNER BROS or WARNER MEDIA marks and Respondent’s continued registration of domain names after being given notice of Respondent’s infringement, Respondent had actual knowledge of Complainant and its rights in its WARNER BROS or WARNER MEDIA marks which is more evidence that Respondent registered the domain names in bad faith.
B. Respondent
Respondent’s surname is Warner and Respondent operates Warnermedia or Warner Brothers Group, along with his brother Anthony Scott Warner, as cartoonists, artists, and illustrations for op-eds. Respondent’s brother operates the <warnermedia.com> domain name.
Respondent registered the disputed domain names for possible use in connection with other artistic and creative ventures he and his brother might undertake in the future.
The Panel notes the disputed domain names’ registration dates, included in the table below.
|
Domain Name |
Registration Date |
|
<warnermediaincorporated.com> |
Feb. 12, 2019 |
|
<warnermediacompanies.com> |
Feb. 12, 2019 |
|
<warnermedialtd.com> |
Feb. 12, 2019 |
|
<warnermediaglobal.com> |
Feb. 12, 2019 |
|
<warnermediapublishing.com> |
Feb. 12, 2019 |
|
<warnermultimedia.com> |
Feb. 8, 2019 |
|
<warnermediasports.com> |
Jan. 30, 2019 |
|
<warnerbrosmediagroup.com> |
Jan. 30, 2019 |
|
<warnerbrothersmedia.com> |
Jan. 30, 2019 |
|
<warenermediainnovationlab.com> |
Jan. 30, 2019 |
|
<warnermediagroupllc.com> |
Jan. 30, 2019 |
|
<warnercomix.com> |
Feb. 8, 2019 |
|
<warnerbrosmediagroupllc.com> |
Feb. 14, 2019 |
|
<warnerbrosemoji.com> |
Feb. 8, 2019 |
|
<warnermedianetworks.com> |
Feb. 12, 2019 |
|
<warnerbrothersgroup.com> |
Jan. 25, 2019 |
|
<warnerbroscomics.com> |
Feb. 8, 2019 |
|
<warnermediasystems.com> |
Feb. 12, 2019 |
|
<warnernetworkmedia.com> |
Feb. 12, 2019 |
|
<Warnermediallc.com> |
Jan. 30 2019 |
|
<warnerglobalmedia.com> |
Feb. 12, 2019 |
|
<warnercrossmedia.com> |
Feb. 12, 2019 |
|
<warnermediatoons.com> |
Feb. 12, 2019 |
|
<warnermediaar.com> |
Feb. 12, 2019 |
|
<warnermediacartoons.com> |
Feb. 12, 2019 |
|
<warnermediacomics.com> |
Feb. 12, 2019 |
|
<warnermediacommunications.com> |
Feb. 12, 2019 |
|
<warnermediamatrix.com> |
Feb. 12, 2019 |
|
<warnermedianetwork.com> |
Feb. 12, 2019 |
|
<warnermedianexus.com> |
Feb. 12, 2019 |
|
<warnermediavr.com> |
Feb. 12, 2019 |
|
<warnertransmedia.com> |
Feb. 12, 2019 |
|
<warnersocialmedia.com> |
Feb. 12, 2019 |
C. Additional Submissions
The Additional Submissions mainly reiterate previously raised issues. Complainant argues that Respondent has engaged in opportunistic bad faith.
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.
Complainant claims to have rights in the WARNER BROS mark through registration with the USPTO and common law rights in the WARNER MEDIA mark. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Here, Complainant has provided the Panel with a copy of its registrations for the WARNER BROS mark (e.g. Reg. No. 1,026,466, registered Dec. 2, 1975). Complainant also provides the Panel with printouts from industry and press articles discussing the popularity of Complainant’s products and services and press coverage of Complainant’s merger and planned use of the WARNER MEDIA mark. Complainant does not assert rights in the term “WARNER” alone.
Complainant further argues that Respondent’s domain names are confusingly similar to Complainant’s WARNER BROS and WARNER MEDIA marks as each domain name wholly incorporate either the WARNER BROS or WARNER MEDIA mark, and adds generic and/or descriptive terms like “networks,” “comics,” and “publishing,”. However, Respondent’s <warnercomix.com> contains the term “WARNER” alone and not the combined terms “WARNER BROS” or “WARNER MEDIA”. Therefore, the Panel does not find confusing similarity between Complainant’s marks and the <warnercomix.com> domain name, but does find confusing similarities with respect to Respondents’ other disputed domain names.
Complainant argues that Respondent has no right or legitimate interests in the disputed domain names as Respondent has no license or authorization to use Complainant’s WARNER BROS or WARNER MEDIA marks. Complainant also argues that Respondent attempts to falsely represent that Respondent is or is affiliated with Complainant by registering the disputed domain names as “Gerry Warner/Warner Brothers Group.” Use of a complainant’s mark without license or authorization can be evidence that respondent lacks rights or legitimate interests in the mark. 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). Where a respondent appears to be commonly known by a disputed domain name by the WHOIS information but provides no affirmative evidence to prove it is, the Panel may find a respondent is not commonly known by a disputed domain name. See Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (finding that though the respondent gave its business name as “WALGREENSGENERAL TRADING LLC” upon registration of the domain name, it failed to present affirmative evidence it was commonly known by the <walgreensshop.com> domain name and thus did not have rights or legitimate interests in the name per Policy ¶ 4(c)(ii)). Complainant states multiple times in the Complaint that Respondent is not authorized to use Complainant’s marks. The Panel agrees, and finds that Respondent has no license or authorization to use Complainant’s marks in the disputed domain names per Policy ¶ 4(c)(ii). Complainant also claims that Respondent falsely represents itself as being or being affiliated with Complainant via the WHOIS information. The Panel agrees, and finds that Respondent is not commonly known by the disputed domain names.
However, in the case of <warnercomix.com> Respondent is simply using his surname “WARNER” (not the marks “WARNER BROS” or “WARNER MEDIA”). The Panel finds that Respondent is in fact known by his WARNER surname with respect to his comics.
Complainant further argues that Respondent fails to make a bona fide offering of goods or service or a legitimate noncommercial or fair use as the disputed domain names resolve to either inactive sites or parked pages. Domain names that resolve to inactive, parked, or “under construction” websites are not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii). See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name). Here, Complainant has provided screenshots of Respondent’s domain names that show inactive or parked pages with no active use. Therefore, the Panel concludes that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii), with respect to the disputed domain names, with the exception of <warnercomix.com>.
Complainant contends that Respondent engaged in a pattern of bad faith registration and use that shows that Respondent registered and uses the disputed domain names in bad faith. Registration of several infringing domain names in a case may show that respondent engaged in a pattern of bad faith registration per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Here, Complainant argues that Respondent registered at least 32 domains (not including <warnercomix.com>) that wholly incorporate Complainant’s WARNER BROS or WARNER MEDIA marks. Therefore, the Panel finds that Respondent registered and uses the disputed domain names, with the exception of <warnercomix.com>, in bad faith per Policy ¶ 4(b)(ii).
Further, Complainant argues and this Panel agrees that Respondent had actual knowledge of Complainant’s rights in the WARNER BROS or WARNER MEDIA marks because of Complainant's widespread use of the mark and Respondent’s registration of multiple infringing domain names after being given notice of Respondent’s initial infringing domain names. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”).
The WARNER BROS mark has been federally registered since 1975. However, the WARNER MEDIA intent to use applications are still pending. Panels have held that registering domain names in anticipation of a merger or acquisition is evidence of bad faith. See Atlantic Automotive Corp. v. michelle popp, FA 1787763 (Forum June 26, 2018) (finding bad faith where the respondent registered the <heritagehondabelair.com> and <heritagehondaofbelair.com> domain names in anticipation of the pending acquisition and rebranding of a car dealership, holding: “The Panel is of the view that the registration of a domain name in temporal proximity to a merger or acquisition involving Complainant and its associated marks supports a finding of bad faith.”). See also Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Here, Complainant provides the Panel with information pertaining to Respondent registering the disputed domain names after Complainant filed its trademark applications for the WARNER MEDIA mark. Complainant further provides the Panel with multiple news articles that report on Complainant’s merger with another entity in which the term WARNER MEDIA mark is heavily used and in which major use of the WARNER MEDIA mark is announced as being planned for the fourth quarter of 2019. For the foregoing reasons, the Panel finds that Respondent registered and used the disputed domain names incorporating the WARNER BROS mark in bad faith and registered and used the domain names incorporating the WARNER MEDIA marks in opportunistic bad faith. On the other hand, since the <warnercomix.com> domain incorporates neither the WARNER BROS or WARNER MEDIA marks, the Panel does not find the <warnercomix.com> domain to have been registered in bad faith.
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii), except with respect to <warnercomix.com>.
Having established all three elements required under the ICANN Policy, for all disputed domain names except for <warnercomix.com>, the Panel concludes that relief shall be GRANTED with respect to such domains.
Accordingly, it is Ordered that the <warnermediaincorporated.com>, <warnermediacompanies.com>, <warnermedialtd.com>, <warnermediaglobal.com>, <warnermediapublishing.com>, <warnermultimedia.com>, <warnermediasports.com>, <warnerbrosmediagroup.com>, <warnerbrothersmedia.com>, <warnermediainnovationlab.com>,<warnermediagroupllc.com>, <warnercomix.com>,<warnerbrosmediagroupllc.com>,<warnerbrosemoji.com>, <warnermedianetworks.com>,<warnerbrothersgroup.com>, <warnerbroscomics.com>,<warnermediasystems.com>,
<warnernetworkmedia.com>,<warnermediallc.com>,<warnerglobalmedia.com>, <warnercrossmedia.com>,<warnermediatoons.com>,<warnermediaar.com>,
<warnermediacartoons.com>,<warnermediacomics.com>, <warnermediacommunications.com>,<warnermediamatrix.com>,
<warnermedianetwork.com>,<warnermedianexus.com>,<warnermediavr.com>, <warnertransmedia.com>, and <warnersocialmedia.com> domain names be TRANSFERRED from Respondent to Complainant.
Having not established all three elements required under the ICAAN Policy with respect to <warnercomix.com>, the Panel concludes that relief shall be DENIED with respect to that domain name.
Accordingly, it is ordered that the <warnercomix.com> domain name REMAIN WITH Respondent.
David A. Einhorn, Panelist
Dated: June 26, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page