Time Warner Inc. v. Thomas
Kerr
Claim Number: FA0708001058733
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@timewarnervote.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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
based in
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.
B. Respondent
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.
FINDINGS
(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.
DISCUSSION
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
rajadomain@yahoo.com +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.
DECISION
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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