Time Warner, Inc. v. Amjad Kausar
Claim Number: FA0602000646066
Complainant is Time Warner, Inc. (“Complainant”), represented by James R. Davis, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036. Respondent is Amjad Kausar (“Respondent”), P.O. Box No. 5706, Karachi 74000, PK.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <southernlivingmagazine.com>, <cartooonetwork.com>, <harrrypotter.com>, <maquest.com>, <moviphone.com> and <wwwcnn.com>, registered with Enom, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 21, 2006.
On February 16, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <southernlivingmagazine.com>, <cartooonetwork.com>, <harrrypotter.com>, <maquest.com>, <moviphone.com> and <wwwcnn.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 February 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 2006 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@southernlivingmagazine.com, postmaster@cartooonetwork.com, postmaster@harrrypotter.com, postmaster@maquest.com, postmaster@moviphone.com and postmaster@wwwcnn.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <southernlivingmagazine.com>, <cartooonetwork.com>, <harrrypotter.com>, <maquest.com>, <moviphone.com> and <wwwcnn.com> domain names are confusingly similar to Complainant’s SOUTHERN LIVING, CARTOON NETWORK, HARRY POTTER, MAPQUEST, MOVIEFONE, and CNN marks.
2. Respondent does not have any rights or legitimate interests in the <southernlivingmagazine.com>, <cartooonetwork.com>, <harrrypotter.com>, <maquest.com>, <moviphone.com> and <wwwcnn.com> domain names.
3. Respondent registered and used the <southernlivingmagazine.com>, <cartooonetwork.com>, <harrrypotter.com>, <maquest.com>, <moviphone.com> and <wwwcnn.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Time Warner, Inc., through its subsidiaries, affiliates, and predecessors-in-interest, is a global leader in the media and entertainment industries. Complainant and its subsidiaries own registrations of several marks with the United States Patent and Trademark Office (“USPTO”). These marks include the CARTOON NETWORK mark (Reg. No. 1,798,899 issued October 12, 1993), the CNN mark (Reg. No. 1,597,839 issued May 22, 1990), the HARRY POTTER mark (Reg. No. 2,450,788 issued May 15, 2001), the MAPQUEST mark (Reg. No. 2,129,378 issued January 13, 1998), the MOVIEFONE mark (Reg. No. 2,337,719 issued April 4, 2000) and the SOUTHERN LIVING mark (Reg. No. 847,643 issued April 16, 1968). Complainant also owns and operates websites under domain names such as <cartoonnetwork.com>, <cnn.com>, <mapquest.com>, <moviefone.com>, and <southernliving.com>.
Respondent registered the <cartooonetwork.com> domain name on July 3, 2001, the <wwwcnn.com> domain name on September 21, 2001, the <harrrypotter.com> and <moviphone.com> domain names on August 2, 2001, the <maquest.com> domain name on September 27, 2000, and the <southernlivingmagazine.com> domain name on September 10, 2001. Internet users who access these domain names are routed to websites that sell products and services provided by Complainant and Complainant’s competitors. These websites also advertise other services such as online gambling, and generate numerous pop-up advertisements.
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 CARTOON NETWORK, CNN, HARRY POTTER, MAPQUEST, MOVIEFONE, and SOUTHERN LIVING marks pursuant to Policy ¶ 4(a)(i) by registering the marks with the USPTO. See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
The disputed domain names are confusingly similar to Complainant’s marks. Each of Respondent’s domain names incorporates one of Complainant’s marks along with an alteration that fails to adequately distinguish the domain name from the mark. Respondent’s <southernlivingmagazine.com> domain name combines one of Complainant’s marks with a descriptive term. Respondent’s <wwwcnn.com> domain name includes the standard Internet prefix “www” before one of Complainant’s marks. Respondent’s <harrrypotter.com>, <maquest.com>, <moviphone.com> and <cartooonetwork.com> domain names simply add or delete letters from Complainant’s marks. Therefore, Respondent’s domain names are confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); 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 the complainant’s marks); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark.).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it does have rights or legitimate interests in them. See 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Because Complainant has presented a prima facie case, the Panel will consider whether the evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent’s domain names are confusingly similar to Complainant’s marks and route Internet users to websites that feature links to other websites offering products and services, some of which are related to Complainant. These websites also expose Internet users to pop-up advertisements. The Panel presumes Respondent receives click-through fees in exchange for diverting Internet users to other websites, and for exposing them to advertisements. Respondent’s use of the disputed domain names is not in connection with bona fide offerings of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
Complainant asserts that Respondent is not licensed or authorized to use any of its marks. The WHOIS database contains no information implying that Respondent is commonly known by any of the disputed domain names. Additionally, there is no evidence on record that Respondent has ever been commonly known by the disputed domain names. The Panel infers that Respondent has no rights or legitimate interests in these domain names under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses domain names that are confusingly similar to Complainant’s marks to redirect Internet users to its own websites. The fact that Respondent’s websites advertise Complainant’s products and services may further confuse Internet users about the relationship between Respondent’s websites and Complainant. Because Respondent presumably receives payment in exchange for diverting Internet users from its websites to other websites, and for exposing them to pop-up advertisements, Respondent is taking advantage of Internet users’ confusion for its own financial gain. Such use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel also finds that some of Respondent’s domain names are incidents of typosquatting. Four of the domain names are misspellings of Complainant’s marks and one domain name merely removes the period between the standard Internet prefix “www” and one of Complainant’s marks. Respondent’s registration of these domain names is a clear attempt to capitalize on typographical errors. Use of typosquatted versions of Complainant’s marks is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] 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 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 <southernlivingmagazine.com>, <cartooonetwork.com>, <harrrypotter.com>, <maquest.com>, <moviphone.com> and <wwwcnn.com> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 31, 2006
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