Time Warner, Inc. v. Michele Dinoia a/k/a
SZK.com
Claim
Number: FA0410000341272
Complainant is Time Warner, Inc. (“Complainant”),
represented by James R. Davis of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC, 20036.
Respondent is Michele Dinoia a/k/a SZK.com (“Respondent”), Via Trilussa 11, Pineto, TE, 64025, Italy.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aimexpress.com> and <wwwcnnmoney.com>,
registered with Tuonome.it Srl and OnlineNic, Inc, respectively.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically October
14, 2004; the National Arbitration Forum received a hard copy of the Complaint
October 18, 2004.
On
October 15, 2004, Tuonome.it Srl, and OnlineNic, Inc. confirmed by e-mail to
the National Arbitration Forum that the domain names <aimexpress.com>
and <wwwcnnmoney.com> are registered with Tuonome.it Srl and
OnlineNic, Inc., respectively, and that Respondent is the current registrant of
the names. Tuonome.it Srl and
OnlineNic, Inc. verified that Respondent is bound by the Tuonome.it Srl and
OnlineNic, Inc. registration agreements and thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
October 22, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 11, 2004, by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@aimexpress.com and postmaster@wwwcnnmoney.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
November 19, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Hon.
Carolyn Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. The domain name Respondent registered, <aimexpress.com>,
is identical to Complainant’s AIMEXPRESS mark, and domain name, <wwwcnnmoney.com>,
is confusingly similar to Complainant’s CNN mark.
2. Respondent has no rights to or legitimate
interests in the <aimexpress.com> or <wwwcnnmoney.com>
domain names.
3. Respondent registered and used the <aimexpress.com>
and <wwwcnnmoney.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Time Warner, Inc., established by extrinsic evidence in this proceeding that
not only is it a global leader in the media and entertainment industries, it
owns the marks used by Respondent to register the disputed domain names. Complainant registered the AIM mark on Jan.
23, 2001 (Reg. No. 2,423,367), the AIM EXPRESS mark on Dec. 24, 2002 (Reg. No.
2,665,694, filed on June 22, 2001), the CNN mark on May 22, 1990 (Reg. No.
1,597,839), the MONEY mark on Oct. 24, 2000 (Reg. No. 2,398,169), and has a
pending registration for the CNNMONEY mark (Ser. No. 76/317,485) with the U.S.
Patent and Trademark Office (“USPTO”).
Respondent
registered the <aimexpress.com> domain name December 5, 2001, and
the <wwwcnnmoney.com> domain name December 3, 2003. Respondent is using both domain names to
lead Internet traffic to a directory service, which lists, inter alia,
services that compete with those of Complainant—Internet services, electronic
mail services, and Internet connectivity.
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."
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(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established rights in the marks in issue.
The Panel finds that Complainant has rights in the AIM EXPRESS mark as
evidenced by its registration with the USPTO, dating back to the trademark
filing date. See FDNY Fire Safety
Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003)
(finding that Complainant’s rights in the FDNY mark relate back to the date
that its successful trademark registration was filed with the U.S. Patent and
Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340
F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal
Register is prima facie proof of continual use of the mark, dating back to the
filing date of the application for registration). The Panel finds that Complainant has rights in the CNN mark as
evidenced by its registration of the CNN mark with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates
a rebuttable presumption that the mark is inherently distinctive, and
Respondent has the burden of refuting this assumption).
The Panel finds
that the domain name that Respondent registered, <aimexpress.com>,
is identical to Complainant’s AIM EXPRESS mark because the only difference in
the mark and the domain name is the omission of the space between the words,
which does not significantly distinguish the domain name from the mark. See Croatia Airlines v. Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name
<croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES
trademark); see also Tech. Props.,
Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the
domain name <radioshack.net> is identical to Complainant’s mark, RADIO
SHACK).
The Panel finds
that the second domain name Respondent registered, <wwwcnnmoney.com>,
is confusingly similar to Complainant’s CNN mark because Respondent has only
added the word “money,” which does not significantly distinguish the domain
name from the mark. Also, the addition
of “www” does not distinguish the domain name from the mark. Additionally, the Panel finds that
Complainant’s pending registration for the CNNMONEY mark strengthens
Complainant’s argument that Respondent’s domain name is similar to
Complainant’s CNN family of marks. See Christie’s Inc. v. Tiffany’s Jewelry
Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain
name <christiesauction.com> is
confusingly similar to Complainant's mark since it merely adds the word
"auction" used in its generic sense); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty.
Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name
<bramblesequipment.com> is confusingly similar because the combination of
the two words "brambles" and "equipment" in the domain name
implies that there is an association with Complainant’s business); see also Bank of Am. Corp. v. InterMos, FA 95092
(Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to Complainant’s registered
trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”); see also Neiman Marcus
Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding
confusing similarity has been established because the prefix "www"
does not sufficiently differentiate the <wwwneimanmarcus.com> domain name
from Complainant's NEIMAN-MARCUS mark).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Complainant
established rights to and legitimate interests in the marks contained in their
entirety within the disputed domain names.
Complainant alleges that Respondent has no such rights and Respondent
has not filed a Response to counter that allegation. Therefore, the Panel accepts any reasonable assertion by
Complainant as true. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of Complainant to
be deemed true); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence).
Respondent is
appropriating Complainant’s marks to connect Internet traffic to Complainant’s
competitors. The Panel finds that
appropriating another’s mark to lead Internet traffic to the mark holder’s
competitors 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). See
Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002)
(finding that Respondent’s use of a confusingly similar domain name to operate
a pay-per-click search engine, in competition with Complainant, was not a bona
fide offering of goods or services); see also Clear Channel Communications,
Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding
that Respondent, as a competitor of Complainant, had no rights or legitimate
interests in a domain name that utilized Complainant’s mark for its competing
website).
Nothing in the
record, including the WHOIS domain name registration information, indicates
that Respondent is commonly known by the disputed domain names. See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent acted in bad faith in registering and using two domain
names that contain Complainant’s protected marks and without any authority from
Complainant permitting such registration and use. Respondent has not filed a Response to counter this
allegation. The Panel infers that
Respondent generates revenues through click-through referral fees and finds
that registering domain names that are identical or confusingly similar to
Complainant’s marks to create confusion for commercial gain is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain); see also
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
Respondent is
appropriating Complainant’s mark to promote Complainant’s competitors. The Panel finds that Respondent registered
the <aimexpress.com> domain name to disrupt Complainant’s
business, which is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that Respondent registered and used the domain name
<eebay.com> in bad faith where Respondent has used the domain name to
promote competing auction sites); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22,
2000) (finding that Respondent registered and used the domain name primarily
for the purpose of disrupting the business of Complainant by offering personal
e-mail accounts under the domain name <openmail.com> which is identical
to Complainant’s services under the OPENMAIL mark).
Respondent
appropriated Complainant’s CNN mark and added the letters “www” to the <wwwcnnmoney.com>
domain name. The Panel finds that
Respondent has appended these letters to capitalize on typing mistakes of
Internet users, a practice known as “typosquatting,” and that such conduct evidences
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Azra
Khan, FA 137223 (Nat.
Arb. 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,” evidence that the domain name was
registered and used in bad faith); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith.”).
The Panel finds
that Complainant has established 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 <aimexpress.com> and <wwwcnnmoney.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 3, 2004
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