Home Box Office, Inc. v. zhouhongsheng
Claim Number: FA2101001927375
Complainant is Home Box Office, Inc. (“Complainant”), represented by Erin Hennessy of Haynes and Boone, LLP, New York, USA. Respondent is zhouhongsheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hbomax.org>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2021; the Forum received payment on January 6, 2021. The Complaint was received in English.
On January 8, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <hbomax.org> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 January 11, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of February 1, 2021 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@hbomax.org. Also on January 11, 2021, the Chinese and English language 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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 name be transferred from Respondent to Complainant.
The relevant Registration Agreement for the at-issue domain is written in Chinese making the favored language of the proceedings also in Chinese. However, pursuant to UDRP Rule 11(a), the Panel may find that there is a likely possibility that the Respondent is conversant and proficient in the English language and further that conducting the proceeding in Chinese would unfairly burden Complainant, while conducting the proceeding in English would not unfairly burden Respondent. Respondent targeted a U.S.-based company by incorporating its HBO MAX mark into the at-issue domain name. Doing so constitutes evidence that Respondent will not be prejudiced if the proceedings were to be conducted in English. See Morgan Stanley v. Peng Bi / Bi Peng, FA1709188 (Forum Feb. 16, 2017) (choosing to conduct the proceedings in English in part because “the disputed domain names contain a famous English language mark); see also, Textron Innovations Inc. v. xie rui dong, FA1750895 (Forum May 26, 2017) (selecting English as the language of the proceeding in part because the “[r]espondent targeted a U.S.- based company by registering the . . . domain name” and “utilized Anglican characters in its domain”). The <hbomax.org> addresses a webpage with English content and the domain itself comprises an English top-level with English based text making up its second-level. . Moreover Respondent, although having been given appropriate notice of the instant complaint, has failed to offer any objection to going forward in English. Therefore in light of the foregoing, the Panel finds that requiring the proceeding to be in Chinese would unfairly burden Complainant and thus should proceed in English.
A. Complainant
Complainant contends as follows:
Complainant offers streaming services on its HBO MAX platform.
Complainant has rights in the HBO MAX mark based on registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <hbomax.org> domain name is confusingly similar to Complainant’s HBO MAX mark because it simply adds the “.org” generic top level domain (“gTLD”) to the mark.
Respondent does not have rights or legitimate interests in the <hbomax.org> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not authorized or licensed Respondent to use the HBO MAX mark. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent offers to sell the domain, fails to make active use of it, and diverts consumers seeking Complainant’s website to Respondent’s own website.
Respondent registered and uses the <hbomax.org> domain name in bad faith. Respondent offers to sell the disputed domain name. Additionally, Respondent’s registration of the at-issue domain name immediately after Complainant’s announcement of Complainant’s HBO MAX streaming service constitutes opportunistic bad faith. Furthermore, Respondent fails to make active use of the domain name. Finally, Respondent had actual knowledge of Complainant’s rights in the HBO MAX mark based on the fame of the mark and the timing of the registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the HBO MAX trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered and uses the at-issue domain to offer the domain name for sale and to trade on the goodwill in Complainant’s trademarks.
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar or identical to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its HBO MAX and HBO trademarks and any national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under 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)).
Respondent’s <hbomax.org> domain name contains Complainant’s HBO MAX trademark less its domain name-impermissible space, followed by a domain name-necessary top-level domain name -here “.org”. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <hbomax.org> domain name from Complainant’s HBO MAX trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <hbomax.org> domain name is confusingly similar or identical to Complainant’s HBO MAX trademark. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Even if we consider only the HBO trademark, such mark is still confusingly similar to Respondent’s domain name. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue 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 at-issue domain name identifies the domain name’s registrant as “zhouhongsheng” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <hbomax.org> domain name. The Panel therefore concludes that Respondent is not commonly known by the <hbomax.org> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Respondent uses the confusingly similar or identical domain name to address a parked page displaying only a message that the domain is for sale. Respondent’s use of the confusingly similar domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (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).”). Likewise, an offer to sell the at-issue domain name indicates Respondent lacks rights or legitimate interests in the domain. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <hbomax.org> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses its confusingly similar domain name to misdirect internet users seeking Complainant to Respondent’s <hbomax.org> webpage. There, Respondent offers the at-issue domain name for sale. Using the domain in this matter shows Respondent’s bad faith under Policy 4(b)(i). See Airbnb, Inc. v. 张昕 / 何青玉, FA 1786279 (Forum June 18, 2018) (“Complainant provides a screenshot of the disputed domain name’s resolving webpage, where Respondent offers to sell the domain name for €9,999 [. . .] The Panel therefore finds that Respondent registered and is using the <airbnb.pro> domain name in bad faith per Policy ¶ 4(b)(i).”).
Additionally, Respondent’s registration of the <hbomax.org> domain name immediately after Complainant’s announcement of Complainant’s HBO MAX streaming service indicates opportunistic bad faith. See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA1501001600741 (Forum Feb. 18, 2015) (concluding that because the respondent registered the <lycaradio.com> domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Lyca, the complainant, the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii)).
Finally, Respondent registered <hbomax.org> knowing that Complainant had trademark rights in the HBO MAX mark. Respondent’s prior knowledge is evident from the worldwide notoriety of Complainant’s trademark and the temporal proximity of Complainant announcement of its HBO MAX branded service and Respondent’s registration of the at-issue domain name. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <hbomax.org> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hbomax.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 5, 2021
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