Warner Media, LLC v. Steven Williams
Claim Number: FA1909001863068
Complainant is Warner Media, LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Steven Williams (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <warnermedia.online>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 19, 2019; the Forum received payment on September 19, 2019.
On September 20, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <warnermedia.online> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@warnermedia.online. Also on September 23, 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 September 25, 2019.
On September 27, 2019, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is the successor-in-title to Time Warner Inc. and a multinational mass media and entertainment conglomerate. Complainant has common law rights in the WARNERMEDIA mark through its extensive and international use of the WARNERMEDIA mark. Respondent’s <warnermedia.online> domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates the WARNERMEDIA mark and simply adds the “.online” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <warnermedia.online> domain name. Respondent is not commonly known by the disputed domain name and Respondent has no license or authorization to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <warnermedia.online> domain name to display a parked webpage featuring click-through links advertising third-party websites.
Respondent registered and uses the <warnermedia.online> domain name in bad faith. Respondent owns over 70 domains that include well-known brand’s trademarks and has been ordered to transfer at least one domain name in a UDRP proceeding, demonstrating a pattern of bad faith registration and use. Respondent passively holds the <warnermedia.online> domain name as it only displays a parked webpage and click-through links. Respondent had actual knowledge of Complainant’s rights in the WARNERMEDIA mark, thus constituting bad faith registration.
B. Respondent
Respondent made the following contentions.
“Respondent was not aware of Complainant’s company when Respondent registered the <warnermedia.online> domain name as Respondent was not advertising or selling products before Respondent purchased the disputed domain name.
Let’s break this down “Shama Elliot intellectual property manager for warnermedia”. When I purchased the domain, I did not know of your company. Your company did not have any advertisements nor sold any products before I purchased the domain. So how would I know, Therefore I did have the legal right to purchase it. It wasn’t a disclaimer when I purchased it. Now regarding moving forward if you want the domain, I’m willing to settle.
Before you decide please hear me out. These new GTLD extensions were made because there is no room for creativity for the average joe on the Internet. What’s the point of creating more space on the internet for creativity when big corporations like you take all the space up yet again? I did not know of your company before I purchased the domain. I have six questions for your company that validate my statement.
1. When was the earliest date you used to advertise your products and services for this trademark via online?
2. What is the date when your company first started selling your products and services for this trademark?
3. What date did your trademark first use the name on social media?
4. When you file your trademark, it is not disclosed to the public. Only after it is completed and then “published” only then will the trademark be known to the public. (with that being said how I would know your trademark name when I purchased the website 3 years after. online was released to the public. I also legally owned the domain for over a year before you reached out and communicated with me.
5. (The) . online GTLD was released 06/15/2015 for companies to purchase before the public which was called the sunrise period. It went live 08/19/2015 and became available to the public 08/26/2015. It was available for purchase for 4 years. If it was highly valuable you had ample time to purchase it. When I purchased it, it did not state that the domain was trademarked.
6. Also, your trademark is “unenforceable” because there is no sale of your products and services before I purchased the domain. So, it has not caused consumer confusion legally.
Also I’ve researched under The Who is data base and discovered there are over 17 people that own warnermedia under different GTLD extensions.
I would like to extend another form of negotiations with you. I do ask that we settle our disagreements positively and come to a mutual resolution that satisfies both parties. I would be open for a settlement for this inconvenience for me because your company did not buy the extension you claim to have trademarked. It shouldn’t be a normal individuals fault that someone in your company didn’t do there job . Being that we both agree positively regarding this valuable domain. I am also willing to partner with you and your creative team. I am a creator and my creative content would be very valuable in the future for your company if your very wise and receptive I’m willing to work with you, give innovative ideas for your company or provide you with the domain in question only if we negotiate on a mutual agreement to settle and on a positive note that satisfies both parties. I’m very attuned with this generation both past, present and future. That is a positive form or aspect of negotiations. I paid for the domain legally without any awareness of your company because it is not advertised on any platform and there is no sale of your products and services before I thought of purchasing the domain almost 2yrs ago when I came up with the idea. The warnermedia.com website is not even a published domain name and it’s for sale. If its so valuable, why haven’t you redirected the website to warnermediagroup.com. Once again, I am willing to cooperate if we can come to a mutual settle, partnership or agreement that both parties can be satisfied. Also, there has been no advancements on search engines to detect or rank the new GTLDS. The dot com domain is still relevant, so I haven’t built a website yet, but for the meantime I am researching on making a website using a website creator for the domain in question that I purchased legally, so it’s not in bad faith. Please read and see the following 3 attachments which I provided.
1. You had 4 years to reserve the Domain of warnermedia.online and also a sunrise period to purchase the domain before the general public. Please see exhibit A picture
2. There are multiple users that own Warner media’s names with different types of GTLDS extensions that are selling their domain which I am not. There is warnermedia.xyz , warnermedia.network and also warnermedia.pictures Please see exhibit B picture
3. The domain warnermedia.com is not a published website. Also, the warnermedia.com website is for sale. Your company is using warnermediagroup.com which is 5 characters more than mine to type on the keyboard also with a different extension. Please see exhibit C picture
4. Before I purchased the domain there, was no products or commercials stating of warner media. Also, the news articles that you have shown me in your exhibits I 10/10/2018 are after the date that I purchased it. Also Exhibit H is CNN which you are the parent company which that evidence might be tampered with. Also Exhibit L is irrelevant regarding the GTLD which we are discussing. Also, omnigoogle is a word I made up its not a company nor does its sale products nor is it a word in the dictionary.
5. Also Exhibit N of warner media’s complaint does state I will cooperate and negotiate but Shama Elliot the Intellectual Property Manager for warnermedia stated No and disregarded any type of resolution. I purchase this domain with my hard-earned money, and this is a company that’s demanding my website that hasn’t made a product and does not sell any consumer goods nor services and has no platform before I purchased it.
6. When you trademark an item the public only knows once it is published. It states on your exhibit you filed it on June 14, 2018 and it was published January 22, 2019. There was no way for me to know of your company.
In conclusion I’m willing to accept and agree to a settlement regarding this inconvenience and hand over the domain. I can completely understand regarding your business needs.”
1. Complainant is a United States company that is the successor-in-title to Time Warner Inc. and a multinational mass media and entertainment conglomerate.
2. Complainant has established its common law rights in the WARNERMEDIA mark through its extensive and international use of the WARNERMEDIA mark and that those rights existed at least from the June 15, 2018, the day Complainant was announced as the successor-in-title to Time Warner Inc.
3. Respondent registered the <warnermedia.online> domain name on June 16, 2018, the day after Complainant was announced as the successor-in-title to Time Warner Inc.
4. Respondent uses the <warnermedia.online> domain name to display a parked webpage featuring click-through links advertising third-party websites.
5. The evidence does not establish that Respondent has a right or legitimate interest in the disputed domain name.
6. The evidence establishes that Respondent registered and has used the disputed domain name in 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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has common law trademark rights in the WARNERMEDIA mark through its extensive and international use of the WARNERMEDIA mark. Complainant also claims to have pending trademark applications before the United States Patent and Trademark Office (“USPTO”). A pending trademark application is insufficient to establish trademark rights per Policy ¶ 4(a)(i). See Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (“The Panel finds that, in this specific case, the pending trademark application(s) of Complainant are insufficient to establish trademark rights.”). 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.”). Complainant 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 subsequent use of the WARNERMEDIA mark. See Amend. Compl. Ex. D, E, H, and I. Therefore, the Panel finds that Complainant has established its common law trademark rights in the WARNERMEDIA mark per Policy ¶ 4(a)(i) and that those rights existed at least from the June 15, 2018, the day Complainant was announced as the successor-in-title to Time Warner Inc.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WARNERMEDIA mark. Complainant contends Respondent’s <warnermedia.online> domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates the WARNERMEDIA mark and simply adds the “.online” gTLD. The addition of a gTLD does not distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”).
Respondent in reply makes one submission that may be specifically referable to this issue which is that Complainant’s trademark is “unenforceable” because there were no sales of its products and services before Respondent purchased the domain name and it has not caused consumer confusion legally.
The Panel does not agree that Complainant’s trademark is unenforceable and finds that there is no basis for so alleging. Moreover, the domain name is confusingly similar to the trademark. It is clearly similar to the trademark as it consists of the same words in substance as the trademark and it is confusingly so because any objective observer would assume that it was referring to Complainant, the well known Warner company and its activities. Indeed, the domain name uses precisely the same words as does the name of the Complainant company itself. Moreover, the Panel finds that it must have been known by Respondent at the time he registered the domain name that Complainant had become the successor-in-title to Time Warner Inc. from the June 15, 2018.
Therefore, the Panel finds Respondent’s <warnermedia.online> domain name is confusingly similar to the WARNERMEDIA mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
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 WARNER MEDIA trademark and to use it in its domain name;
(b) Respondent registered the <warnermedia.online> domain name on June 16, 2018;
(c) Complainant’s common law trademark was current when Respondent registered the domain name;
(d) Respondent uses the <warnermedia.online> domain name to display a parked webpage featuring click-through links advertising third-party websites;
(e) Respondent engaged in these activities without the consent or approval of Complainant.
As these matters go to make up a prima facie case, it is now a matter for the Panel to examine what Respondent has said in response and to decide if it rebuts the prima facie case.
Respondent’s arguments have already been set out in their entirety and there is no need to repeat them here, except where it is necessary to do so for the purpose of analyzing the argument.
Respondent should be advised that the Panel has given careful consideration to all of his submissions and taken them into account.
Thus, Respondent essentially submits that he was not aware of Complainant’s company when he registered the <warnermedia.online> domain name as Complainant was not advertising or selling products before Respondent purchased the disputed domain name.
Even if Complainant was not advertising or using the trademark to sell goods and services on June 16, 2018, which the Panel finds highly unlikely, as it had just become the successor-in-title to Time Warner Inc., that does not negate the validity of the trademark or give Respondent any right to use it in his domain name. Respondent must have been aware of Complainant’s becoming the successor-in-title to Time Warner Inc., from June 15, 2018 and the Panel infers that Respondent registered the domain name for this very reason. In any event, common law trademarks are recognized in the United States if they are made out by evidence and the Panel has found that in the present case Complainant’s common law trademark has been made out by evidence. Accordingly, Complainant is entitled to use that trademark as the basis for protection when a domain name incorporating and trading on that trademark has been registered and used, which it has. The Panel therefore does not accept Respondent’s argument.
Next, Respondent submits that he is prepared to negotiate to “settle” the case, which to say the least does not strengthen Respondent’s position, as it suggests that the basis for its registration and use of the domain name is somewhat lacking in conviction.
Respondent then makes a series of submissions in various forms along the lines that it bought and used the domain name legally, that Complainant could have but did not reserve and then acquire the domain name itself when it was launched as one of the new generic Top Level Domains and that other parties apparently own domain names incorporating the name “warnermedia”. The Panel understands those arguments, but they do not give Respondent the right to register a domain name that incorporates Complainant’s trademark, to use it in a manner that suggests that it is Complainant that is using the domain name, to use it to advertise other media and media buying companies and in effect to make money by trading on Complainant’s trademark. This is essentially what Respondent has done and not only does it not give him any right or legitimate interest in the domain name but it establishes that he does not have any such right or interest.
It should also be said for reasons of completeness that Respondent is not able to make out any of the other grounds that might show, on appropriate evidence, that he has a right or legitimate interest in the domain name. Thus, it appears that Respondent is not commonly known by the disputed domain name and Respondent has no license or authorization to use the mark. In determining that issue, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Steven Williams,” and there is no other evidence to suggest that Respondent was authorized to use the WARNERMEDIA mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Secondly, Complainant contends Respondent has failed to use the <warnermedia.online> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. In support, Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays a parked webpage containing various advertising links, including links to companies in media and media buying. See Amend. Compl. Ex. J. Using a disputed domain name to display hyperlinks, whether competing or unrelated to a complainant, may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The Panel therefore finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Accordingly, in total, Respondent has failed to rebut the prima facie case against it.
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 argues Respondent owns over 70 domains that include well-known brand’s trademarks and has been ordered to transfer at least one domain name in a UDRP proceeding, demonstrating a pattern of bad faith registration and use and showing Respondent registered the <warnermedia.online> domain name in bad faith. See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”) Complainant provides WHOIS records for domain names owned by Respondent that include famous third-party marks and an adverse UDRP decision against Respondent. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant argues Respondent had actual knowledge of Complainant’s rights in the WARNERMEDIA mark, thus constituting bad faith registration. Actual notice of a complainant’s trademark rights when registering a disputed domain name can demonstrate bad faith registration per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues a number a ways in which Respondent demonstrates actual knowledge of Complainant’s rights in the WARNERMEDIA mark: Respondent registered the disputed domain name one day after Complainant’s public announcement of a merger and adoption of the name Warner Media, the disputed domain name wholly incorporates the WARNERMEDIA mark, Respondent recognizes knowledge of Complainant’s pre-merger name, Time Warner, Respondent parked the disputed domain name, and Respondent is a serial cybersquatter. See Amend. Compl. Exs. E, G, H, L, M, and N. As the Panel finds this evidence compelling, the Panel finds Respondent registered the disputed domain name in bad faith per 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 WARNER MEDIA mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression. In that regard it must be said again that Respondent registered the <warnermedia.online> domain name on June 16, 2018, the day after Complainant was announced as the successor-in-title to Time Warner Inc. Respondent thus registered and has retained and used the domain name precisely for the reason that Complainant is the successor-in-title to Time Warner Inc. and to extract money by trading on that fact through its proposed “settlement”. Such conduct could not be described as anything but bad faith registration and use.
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 <warnermedia.online> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 29, 2019
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