Time Warner Inc. v. Thomas Kerr
Claim Number: FA0708001058733
Complainant is Time Warner Inc. (“Complainant”), represented by James
R. Davis, of Arent Fox PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name here at issue is <timewarnervote.com>, which is registered with GoDaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 8, 2007.
On August 7, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <timewarnervote.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 August 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 29, 2007 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on August 16, 2007.
On August 22, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends, among other things, that:
Complainant is a major provider of cable television broadcasting and related products and services offered under the TIME WARNER trademark.
Complainant holds a number of registrations for the TIME WARNER trademark from the United States Patent and Trademark Office (“USPTO”), including for Reg. No. 1,816,474, issued January 11, 1994.
Complainant also offers its products and services on the Internet from the domain identified as <timewarner.com>.
Respondent registered the disputed domain name on December 16, 2005.
The subject domain name is confusingly similar to Complainant’s mark.
Respondent is not licensed or otherwise authorized to use Complainant’s mark.
Respondent is not commonly known by the domain name <timewarnervote.com>.
Respondent is a principal of and senior portfolio manager and analyst
for Reed, Conner & Birdwell, an investment advisor
Respondent’s domain name resolves to a website offering “adult video” and “adult porn” and similar adult content.
Internet users seeking Complainant’s website may be confused as to Complainant’s possible affiliation with the disputed domain name, and Respondent profits from this potential confusion.
By virtue of its employment as a professional investment advisor and money manager, Respondent has actual knowledge of Complainant’s mark.
When confronted by Complainant about its use of the contested domain name, Respondent offered to sell the domain to Complainant for $10,000, a price twice the amount it had solicited from other possible buyers before the contact from Complainant.
Respondent contends, among other things, that:
Respondent has “professional knowledge of the name Time Warner.”
The contested domain name is currently parked at its host server, and now conducts no business activity.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which the Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
We first consider whether Complainant has rights in the mark TIME
WARNER sufficient for purposes of Policy ¶
4(a)(i). In so doing, we conclude
that Complainant’s trademark registrations are adequate to satisfy the
requirements under Policy ¶ 4(a)(i). See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum
June 7, 2007) (holding that “[t]his trademark registration [with the USPTO]
establishes Complainant’s rights in the mark pursuant to Policy 4(a)(i).”); see also Victoria's Secret
Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum
May 7, 2007) (finding “that Complainant has established rights in the
We next examine the question of confusing similarity as between Complainant’s mark and Respondent’s competing domain name. On this issue, we conclude that Respondent’s <timewarnervote.com> domain name is confusingly similar to Complainant’s TIME WARNER mark because it uses the mark in its entirety and simply adds the genereic word “vote” and the generic top-level domain (“gTLD”) “.com.” The addition of the generic word “vote” does not sufficiently alter the mark so as to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). Moreover, the addition of a gTLD is irrelevant to a determination of whether a domain name is confusingly similar under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the domain name <westfieldshopping.com> confusingly similar to a competing WESTFIELD mark because the mark was the dominant element); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the <bodyshopdigital.com> domain name was confusingly similar to a complainant’s THE BODY SHOP trademark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar under the Policy).
We therefore find that the proof requirements of Policy ¶ 4(a)(i) have been satisfied.
Under this heading, Complainant must first make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that it does nonetheless have rights or legitimate interests under the Policy. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the domain name <timewarnervote.com> because Respondent’s WHOIS information identifies Respondent as “Thomas Kerr.” Consistent with this, Respondent has offered no evidence, and no evidence appears in the record, to indicate that Respondent is commonly known by the <timewarnervote.com> domain name within the meaning of Policy ¶ 4(c)(ii). Complainant further alleges that it has not authorized Respondent to use the TIME WARNER mark. Respondent does not deny this allegation. The Panel therefore concludes that Respondent is not commonly known by the <timewarnervote.com> domain name, so Respondent has failed to show that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when that respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Additionally, Complainant asserts that Respondent uses the disputed domain name to display links to “Adult Video” and “Adult Porn” websites, an assertion which Respondent does not deny. In the circumstances here obtaining, this behavior cannot be said to constitute a use in connection with a bona fide offering of goods or services as contemplated in Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Sony Kabushiki Kaisha v. Domain firstname.lastname@example.org +1.415.0, FA 128701 (Nat. Arb. Forum Dec. 16, 2002) (finding that a respondent’s use of its domain name to divert Internet users to a website offering links to adult orientated websites was not in connection with a bona fide offering of goods or services pursuant to Policy ¶¶ 4(c)(i) or a legitimate noncommercial or fair use under 4(c)(iii)); see also InnoTown AS v. Forest, D2003-0718 (WIPO Oct. 27, 2003) (a Respondent’s website offering links to various pornographic web sites held not to be a bona fide offering of goods or services).
We are thus constrained to find that the requirements of Policy ¶ 4(a)(ii) have been met.
Complainant contends that Respondent uses the <timewarnervote.com> domain name to redirect Internet users to Respondent’s website displaying links to third-party websites, which display “adult video” and “adult porn” and similar adult content. Complainant also contends that Internet users seeking Complainant’s website may become confused as to Complainant’s affiliation with the disputed domain name. Complainant further asserts that Respondent profits commercially from this confusion. Respondent makes no effort to deny these assertions. This being so, the panel concludes that Respondent’s use of the domain name <timewarnervote.com> as alleged is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Further, Complainant argues that, when confronted about its use of the disputed domain name, Respondent offered to sell the domain name to Complainant for $10,000, a price twice the level it had previously solicited from possible purchasers. Respondent does not contest these assertions. Respondent’s offer to sell the <timewarnervote.com> domain name to Complainant in this manner is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Moreover, it is extremely difficult, if not impossible from the facts presented and not denied, to escape the conclusion that Respondent’s motive in resolving its domain name to websites dedicated to the sale of adult-oriented material was not merely to profit illicitly from Internet traffic in the immediate moment, but also to position itself to extort an inflated sale price from Complainant once its behavior should come to light. This represents a very high degree of bad faith conduct.
Finally, Complainant asserts that, by virtue of its employment as a professional investment advisor and money manager, Respondent had actual knowledge of Complainant’s mark when it registered the contested domain name. Respondent does not deny this, and indeed confirms that it has “professional knowledge of the name Time Warner.” Such actual knowledge of Complainant’s mark renders Respondent’s registration and use of the contested domain name in bad faith under Policy ¶ 4(a)(iii). See RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (inferring that a respondent’s registration of the <wwwremax.com> domain name, incorporating a complainant’s entire mark, was done with actual notice of that complainant’s rights in the mark prior to registering the infringing domain name, evidencing bad faith); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").
For all of these reasons, the Panel finds that the evidentiary elements of Policy ¶ 4(a)(iii) have been amply satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <timewarnervote.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 28, 2007
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