Time Warner, Inc. v. Sumirah Ahmad
Claim Number: FA0512000604988
Complainant is Time Warner, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Sumirah Ahmad (“Respondent”), P.O. Box 1211, Kuala Lumpur, Kuala, 56100, Malaysia.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <aolauto.com>, <loveonaol.com>, <wwwpeoplemagazine.com>, <peolpemagazine.com>, <peoople.com>, <magazinepeople.com>, <wwwtimemagazine.com>, <wwwcookinglight.com>, <sportsillustratedswimsuits.com>, <roadrunnerssports.com> and <loneytunes.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 9, 2005.
On December 9, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the National Arbitration Forum that the <aolauto.com>, <loveonaol.com>, <wwwpeoplemagazine.com>, <peolpemagazine.com>, <peoople.com>, <magazinepeople.com>, <wwwtimemagazine.com>, <wwwcookinglight.com>, <sportsillustratedswimsuits.com>, <roadrunnerssports.com> and <loneytunes.com> domain names are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.com registration agreement and has 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 December 9, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 2005 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@aolauto.com, postmaster@loveonaol.com, postmaster@wwwpeoplemagazine.com, postmaster@peolpemagazine.com, postmaster@peoople.com, postmaster@magazinepeople.com, postmaster@wwwtimemagazine.com, postmaster@wwwcookinglight.com, postmaster@sportsillustratedswimsuits.com, postmaster@roadrunnerssports.com, postmaster@loneytunes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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. Respondent’s <aolauto.com>, <loveonaol.com>, <wwwpeoplemagazine.com>, <peolpemagazine.com>, <peoople.com>, <magazinepeople.com>, <wwwtimemagazine.com>, <wwwcookinglight.com>, <sportsillustratedswimsuits.com>, <roadrunnerssports.com> and <loneytunes.com> domain names are confusingly similar to Complainant’s AOL, PEOPLE.COM, TIME, COOKING LIGHT, SPORTS ILLUSTRATED, ROAD RUNNER, and LOONEY TUNES marks.
2. Respondent does not have any rights or legitimate interests in the <aolauto.com>, <loveonaol.com>, <wwwpeoplemagazine.com>, <peolpemagazine.com>, <peoople.com>, <magazinepeople.com>, <wwwtimemagazine.com>, <wwwcookinglight.com>, <sportsillustratedswimsuits.com>, <roadrunnerssports.com> and <loneytunes.com> domain names.
3. Respondent registered and used the <aolauto.com>, <loveonaol.com>, <wwwpeoplemagazine.com>, <peolpemagazine.com>, <peoople.com>, <magazinepeople.com>, <wwwtimemagazine.com>, <wwwcookinglight.com>, <sportsillustratedswimsuits.com>, <roadrunnerssports.com> and <loneytunes.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Time Warner, Inc., holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AOL (Reg. No. 1,977,731 issued June 4, 1996), PEOPLE.COM (Reg. No. 2,522,247 issued December 25, 2001), TIME (Reg. No. 629,122 issued June 19, 1956), COOKING LIGHT (Reg. No. 1,586,703 issued March 13, 1990), SPORTS ILLUSTRATED (Reg. No. 754,203 issued August 6, 1963), ROAD RUNNER (Reg. No. 1,915,162 August 29, 1995), and LOONEY TUNES (Reg. No. 1,297,890 issued September 25, 1984) marks.
Respondent registered the <aolauto.com>, <loveonaol.com>, <wwwpeoplemagazine.com>, <peolpemagazine.com>, <peoople.com>, <magazinepeople.com>, <wwwtimemagazine.com>, <wwwcookinglight.com>, <sportsillustratedswimsuits.com>, <roadrunnerssports.com> and <loneytunes.com> domain names between January 20, 2002 and May 6, 2002. Respondent is using the disputed domain names to redirect Internet users to commercial websites that feature pop-up advertisements, online gambling services, and third-party magazines that compete with Complainant.
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 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 (Nat. Arb. 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.”).
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 has established rights in the AOL, PEOPLE.COM,
TIME, COOKING LIGHT, SPORTS ILLUSTRATED, ROAD RUNNER, and LOONEY TUNES marks
through registration of the marks with the USPTO. See Vivendi Universal Games
v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
The disputed domain names that Respondent registered are
confusingly similar to Complainant’s AOL, PEOPLE.COM, TIME, COOKING LIGHT,
SPORTS ILLUSTRATED, ROAD RUNNER, and LOONEY TUNES marks. The disputed domain names incorporate
Complainant’s marks and deviate with the additions of generic top-level
domains, numerous common terms, letters and misspelled variations of Complainant’s
marks. These additions to Complainant’s
registered marks do not distinguish the domain names pursuant to Policy ¶
4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063
(Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a
generic top-level domain is irrelevant when considering whether a domain name
is identical or confusingly similar under the Policy.”); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6,
2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity or confusing similarity for
purposes of the Policy despite the addition of other words to such marks.”); see also Space
Imaging LLC v. Brownell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name
combines Complainant’s mark with a generic term that has an obvious
relationship to Complainant’s business); see
also Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by
misspelling words and adding letters to words, a Respondent does not create a
distinct mark but nevertheless renders the domain name confusingly similar to
Complainant’s marks).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using the disputed domain names to redirect
Internet users to commercial websites that feature pop-up advertisements,
online gambling services, and third-party magazines that compete with
Complainant. Respondent’s use of domain
names that are confusingly similar to Complainant’s marks to redirect Internet
users interested in Complainant’s goods and services to websites that offer
goods and services unrelated to Complainant’s business is not a use in
connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Wells Fargo & Co. v. Party Night Inc. FA 144647 (Nat. Arb.
Forum Mar. 18, 2003) (holding that the respondent’s
use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to
divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or
services); see also Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no
rights or legitimate interest where the respondent used the disputed domain
name to redirect Internet users to an online casino); see also Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept.
30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27,
2002) (finding that the respondent’s use of a confusingly similar domain name
to operate a pay-per-click search engine, in competition with the complainant,
was not a bona fide offering of goods
or services); see also Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”).
Moreover, Respondent has offered no evidence and there is no evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name nor was the respondent using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names, which are confusingly similar to Complainant’s marks, to redirect Internet users to Respondent’s commercial websites that feature goods and services that compete with Complainant’s business. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel infers that Respondent is using the disputed domain names to generate click-through fees. Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv), as Respondent is using the domain names to intentionally attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its websites. See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aolauto.com>, <loveonaol.com>, <wwwpeoplemagazine.com>, <peolpemagazine.com>, <peoople.com>, <magazinepeople.com>, <wwwtimemagazine.com>, <wwwcookinglight.com>, <sportsillustratedswimsuits.com>, <roadrunnerssports.com> and <loneytunes.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 12, 2006
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