Warner Bros. Entertainment Inc. v. Cavenger Corp c/o Michael Hardaway
Claim Number: FA0712001118408
PARTIES
Complainant
is Warner Bros. Entertainment Inc. (“Complainant”),
represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional
Corporation,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tmzontv.com>, registered with Schlund+Partner Ag.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 10, 2007.
On December 10, 2007, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <tmzontv.com> domain name is registered with Schlund+Partner Ag and that the Respondent is the current registrant of the name. Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 17, 2007, Complainant amended Complaint so as to more completely name the Respondent, and so as to list the Respondent’s email address as found in the Registrar’s Whois database.
On December 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2008, 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@tmzontv.com by e-mail.
A timely Response was received and determined to be complete on January 7, 2008.
A timely Additional Submission was received from Complainant on January 14, 2008 in accordance with the Forum’s Supplemental Rule 7.
A timely Additional Submission was received from Respondent on January 14, 2008 in accordance with the Forum’s Supplemental Rule 7.
On January 16, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name <tmzontv.com> be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant alleges as follows:
The domain name <TMZ.com> is owned by Warner Brothers Entertainment Inc. (hereinafter referred to as “Warner Bros.”), one of the world’s leading purveyors of audio-visual entertainment. For more than eighty (80) years, Warner Bros. has developed, produced and distributed audio visual entertainment. Warner Bros. has also been at the forefront of distribution of content over the Internet, such as with the content laden website, <TMZ.com>.
TMZ.COM (the initials “TMZ” are an acronym for “Thirty-Mile Zone”) signifies the area in which a significant portion of the American motion picture industry (including personnel and talent) is located.
Complainant has obtained a Patent and Trademark Office (“PTO”) registration for the trademark TMZ.COM and pending applications for the related trademark TMZ. The first use of the TMZ.COM trademark was in 2005. In July of 2007, a press release announced a television production based upon the <TMZ.com> website content. On July 11, 2007, Respondent registered the domain name <tmzontv.com>.
Complainant alleges that Respondent’s domain main <tmzontv.com> fully incorporates Complainant’s famous trademark TMZ.COM and thus, is confusingly similar to the trademark, under UDRP standards.
Complainant also contends that
Respondent has no legitimate interest in the disputed domain name <tmzontv.com> in that: Respondent
is not commonly known by the domain name; Respondent has not been authorized by
Complainant to use the domain name; Respondent registered the domain name to
infringe upon Complainant’s rights in its trademark and to trade off
Complainant’s goodwill; and Respondent’s use of the domain name does not
constitute a bona fide offering of goods and services.
Complainant further alleges that the following evidence shows Respondent’s registration and use of the disputed domain name in bad faith: first, the Respondent parked the domain name with an offer to sell same; secondly, the fame of the mark TMZ.COM along with the registration of same, imputes knowledge of Complainant’s famous trademark to Respondent; thirdly, Respondent intentionally used the domain name to attract, for commercial gain, Internet users to a website which provides links to other websites involved in the sale of comic books published by competitors; and lastly, Respondent evidences bad faith by failing to cease-and-desist from wrongful use of the domain name after being notified by Complainant of the unauthorized use.
B. Respondent alleges as follows:
Respondent alleges that the registration of the domain <tmzontv.com> was fair and in good faith, in that the disputed domain was registered on July 11, 2007, before the first episode of TMZonTV, which aired on September 10, 2007, at a time when Claimant had no trademark registration for TMZONTV.
Respondent contends that TMZ is a generic trademark, and that a separate registration for TMZONTV is required. Respondent also contends that the phrase “onTV” is equally as important as the TMZ phrase.
Respondent contends that Complainant’s mark is not longstanding, but is a mere two (2) year old brand. Respondent says that this case is not analogous to typosquatting cases, or to cases where the marks are the same, but for the addition of a suffix.
Respondent also contends that Claimant’s TMZonTV is a separate entity from TMZ. Joint owners Warner Brothers and Fox Television failed to secure legal protection for the new program TMZonTV.
Respondent alleges that the disputed web site is clearly indicated as a parked page that holds no connection to the Complainant. Further, the page includes the following disclaimer:
This page is provided to the domain owner free by SEDO’s Domain
Parking.
Disclaimer: Domain owner and Sedo maintain no relationship with third
party advertisers. Reference to any
specific service or trademark is not controlled by Sedo or domain owner and
does not constitute or imply its association, endorsement or recommendation.
Furthermore, Respondent contends that its Exhibit E shows that the Complainant actually advertised on Respondent’s site.
C. Additional Submissions
Complainant, in its Additional Submission, alleges as follows:
Complainant has rights in the mark TMZ via a valid trademark registration for TMZ.COM as well as a pending application, filed on September 15, 2005, for TMZ.
Complainant contests Respondent’s assertion that the addition of the words “onTV” are insufficient to overcome the confusing similarity prong of the UDRP analysis.
Complainant cites case law to represent that the mere addition of the generic term “tv” does not reduce the likelihood of confusion under the Policy. Complainant asserts that, in contradiction to Respondent’s assertions, the UDRP does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names.
Complainant assets that <TMZ.com> has acquired a certain notoriety as an online source of news and information about the motion picture industry and its celebrities. It attaches as evidence of same, Exhibit L, which is constituted of printouts of news articles describing <TMZ.com> news scoops of more traditional media sources.
Complainant continues to assert that Respondent registered and used the disputed name in bad faith, and did not even attempt to rebut Warner Brother’s argument that the web page included an offer to sell the disputed domain name.
Respondent, in its Additional Submission, alleges as follows:
The mark TMZONTV is the name of a television program and is a separate entity from the website <TMZ.com>. The basis of the present dispute is not a typo-domain dispute, wherein the consumer is re-directed to a competing search engine. Rather, the consumers are directed to a clearly marked page that states, among other things, “this domain may be for sale.” The consumer is not confused into thinking that he/she has arrived at a TMZonTV website.
TMZ is not a long-standing and widely known brand. The brand has received only regional and muted promotion and thus, the owners are not entitled to claim ownership of the mark TMZONTV, based upon the establishment of common law rights.
Further, a pending application for a TMZ trademark registration is not a sufficient basis, with which to base a claim of legal ownership of the <tmzontv.com> domain name.
FINDINGS
1.
The domain name registered by the Respondent, that is <tmzontv.com>, is
identical or confusingly similar to a trademark or service mark in which the Complainant
has rights, TMZ.COM ; and
2. The Respondent has no rights or legitimate interests in respect of the domain name; and
3. The domain name <tmzontv.com> has been registered and is being used 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:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Respondent asserts that, because Complainant has not registered TMZONTV as a trademark, Complainant lacks rights in the disputed domain name of <tmzontv.com>. However, Complainant has properly claimed superior rights in the disputed domain name through its registration of the identical and/or confusingly similar TMZ.COM mark with the United States Patent and Trademark Office (hereinafter “PTO”) (Reg. No. 3,240,696 issued May 8, 2007). The Panel finds that this registration sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See 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."); 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.”).
Respondent
was not persuasive, either in its Response or in its Additional Submission, in
its argument that Complainant has failed to establish common law rights for the
television program TMZonTV. Press
releases regarding the establishment of this television show were issued in
January of 2007and the show was announced at the 2007 NATPE Conference and
Exhibition in
Respondent’s <tmzontv.com> domain name is confusingly similar to Complainant’s TMZ.COM mark, in that the domain name includes the entire mark and adds the generic terms “on” and “tv” to the mark, which comprises the title of Complainant’s new television show.
Respondent
argues the importance of the addition of the words “onTV,” claiming that the
addition of these words is enough to overcome the confusing similarity prong of
the UDRP analysis. However, as persuasively cited in Complainant’s Additional
Submission, an arbitral panel specifically found the addition of the term “tv”
confusingly similar to Complainant’s underlying
Therefore, the Panel finds that the <tmzontv.com> domain name is confusingly similar to Complainant’s TMZ.COM mark 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 Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel therefore finds, that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant
must first make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii), and then the burden of
production shifts to Respondent to show
that it does have rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Issues §2.1; see
also Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO
June 05, 2000).
Here, Complainant has made a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name, in that Respondent is not commonly known by the <tmzontv.com> domain name and moreover, has gained no rights or legitimate interests in the <tmzontv.com> domain name through a license, as Complainant has never authorized Respondent to use its TMZ.COM mark. Although the WHOIS information indicates a privacy shield, the Response indicates that Respondent is “Cavenger Corp c/o Michael Hardaway.” Respondent does not proffer any evidence that it ever used any formation of “tmz” in it business name or in its marketing materials. See 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 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).
Complainant’s Exhibit I to its Complaint shows that Respondent’s <tmzontv.com> domain name resolves to a website featuring links to third-party celebrity and gossip websites in competition with Complainant. The bottom of this page contains a fine print disclaimer stating that “[t]his page provided to the domain owner free by Sedo’s Domain Parking. Domain owner and Sedo maintain no relationship with third party advertisers.”
Complainant was astute in pointing out, in its Additional Submission, that the term “relationship” does not preclude the existence of any financial benefits from links posted on the site. The Respondent presumably profits when Internet users click on these links. This Panel finds that this usage of the domain name does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii), and further indicates Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
In addition, Complainant argues that Respondent’s website located through the <tmzontv.com> domain name indicates that the disputed domain name is for sale. Complainant’s Exhibit I states that “[t]he domain tmzontv.com may be for sale by owners.” The Panel finds this to be further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel also finds that the disclaimer displayed on Respondent’s website is insubstantial as a firewall to segregate and establish any rights or legitimate interests Respondent might have in the <tmzontv.com> domain name pursuant to Policy ¶ 4(a)(ii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also AltaVista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
Thus,
Respondent has not met its burden of production to show that it does have
rights or legitimate interests sufficient to rebut Complainant’s prima facie case that Respondent lacks
any rights or legitimate interests in the disputed domain name <tmzontv.com>.
The Panel therefore finds, that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant argues that Respondent’s website indicates that the <tmzontv.com> domain name is for sale. The Panel finds that Respondent’s willingness to dispose of the disputed domain name indicates 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.”).
As the links displayed on the website that resolves from the <tmzontv.com> domain name redirect Internet users to websites that compete with Complainant, the Panel finds a presumption that Respondent is disrupting Complainant’s business. Under Policy ¶ 4(b)(iii), this constitutes further evidence of Respondent’s bad faith registration and use. 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, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant also argues that Respondent is intentionally using the <tmzontv.com> domain name to attract, for commercial gain, Internet users who may be confused as to Complainant’s affiliation with the corresponding website. The Panel agrees with this argument, on the basis of the similarity of the mark, the notoriety of the mark, the timing of the registration of the mark, and the refusal to cease-and-desist usage of the mark, upon notice. The Panel finds these market conditions and intentional responses to be indicia that Respondent registered and is using the <tmzontv.com> domain name in bad faith. See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Finally, the Panel finds that Respondent’s inclusion of a disclaimer on its website does not mitigate any bad faith registration and use under Policy ¶ 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to the complainant’s website on the respondent’s website).
The Panel therefore finds, that Policy ¶4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <tmzontv.com> domain name shall be TRANSFERRED from Respondent to Complainant.
Carol
M. Stoner, Esq., Panelist
Dated: January 30, 2008
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