Time Warner Inc. v. The data in Bulkregister.com's WHOIS database is p c/o NA
Claim Number: FA0805001195195
Complainant is Time Warner Inc. (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <peoplemagazine.com>, <cnnweather.com>, and <mappquest.com>, all registered with Enom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On June
3, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 23, 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@peoplemagazine.com, postmaster@cnnweather.com, and postmaster@mappquest.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <peoplemagazine.com> is confusingly similar to Complainant’s PEOPLE WEEKLY mark. Respondent’s <cnnweather.com> domain name is confusingly similar to Complainant’s CNN mark. Respondent’s <mappquest.com> domain name is confusingly similar to Complainant’s MAPQUEST marks.
2. Respondent does not have any rights or legitimate interests in the <peoplemagazine.com>, <cnnweather.com>, and <mappquest.com> domain names.
3. Respondent registered and used the <peoplemagazine.com>, <cnnweather.com>, and <mappquest.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant currently holds valid trademark and service mark registrations with the United States Patent and Trademark Office (“USPTO”) for the following marks: PEOPLE WEEKLY, for a national weekly illustrated general interest magazine (Reg. No. 1,137,391 issued July 1, 1980); CNN, for cable and television news broadcasting services (Reg. No. 1,597,839 issued May 22, 1990); and MAPQUEST, for on-line information, geographic and map image services (Reg. No. 2,129,378 issued January 13, 1998).
The <peoplemagazine.com>
domain name was registered on
The <cnnweather.com>
domain name was registered on
The <mappquest.com>
domain name was registered on
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 sufficiently established its rights in the
PEOPLE WEEKLY, CNN, and MAPQUEST marks through registration with the USPTO
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 KCTS Television Inc. v. Get-on-the-Web Ltd.,
D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the
purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is
registered in a country other than that of the respondent’s place of business).
The <peoplemagazine.com> domain name incorporates
the core of Complainant’s PEOPLE WEEKLY mark, PEOPLE, followed by the word
“magazine,” which describes exactly the product provided under the PEOPLE
WEEKLY mark. The <cnnweather.com>
domain name contains Complainant’s CNN mark in its entirety followed by the
word “weather,” which describes a type of news reporting service offered under
Complainant’s CNN mark. The <mappquest.com>
domain name is a misspelling of Complainant’s MAPQUEST mark with the inclusion
of an extra “p.” All three disputed
domain name incorporate the generic top level domain (“gTLD”) “.com.” It is well-established that the inclusion of
a gTLD is irrelevant for a Policy ¶ 4(a)(i) anaylsis. Additionally, the addition of a descriptive
word directly related to the products or services offered under a complainant’s
mark does not sufficiently distinguish a disputed domain name. Finally, a simple misspelling of a mark found
in a disputed domain name will not negate a finding of that domain name’s confusing
similarity with the said mark. For all
of the aforementioned reasons, the Panel finds that the <peoplemagazine.com>,
<cnnweather.com>, and <mappquest.com> domain
names are confusingly similar to the PEOPLE WEEKLY, CNN, and MAPQUEST marks
pursuant to Policy ¶ 4(a)(i). See 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); see also Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding
that the addition of the letter “c” to the complainant’s SAFLOK mark does not
distinguish the <saflock.com> domain name from the mark under Policy ¶
4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June
25, 2000) (finding that the top level of the domain name such as “.net” or
“.com” does not affect the domain name for the purpose of determining whether
it is identical or confusingly similar).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).
Under a Policy ¶ 4(a)(ii) analysis, Complainant must at
least demonstrate a prima facie case
that Respondent has no rights or legitimate interests in the <peoplemagazine.com>, <cnnweather.com>,
and <mappquest.com> domain names. See VeriSign
Inc. v. VeneSign
No response has been submitted in this case. Therefore, the Panel presumes that Respondent
has no rights or legitimate interests in the disputed domain names, but will
nonetheless consider the elements listed under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (Respondent’s failure to respond means
that Respondent has not presented any circumstances that would promote its
rights or legitimate interests in the subject domain name under Policy ¶
4(a)(ii).”); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names).
There is nothing in Respondent’s WHOIS information or
anything else in the record that established that Respondent is or ever was
commonly known by any of the disputed domain names. Additionally, Respondent has not sought or
been granted permission to use either the PEOPLE WEEKLY, CNN, or MAPQUEST marks
in any way. As a result, the Panel finds
that Respondent is not or never was commonly known by either the <peoplemagazine.com>, <cnnweather.com>,
or <mappquest.com> domain names pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also 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).
All three of the disputed domain names resolve to a series
of pop-up advertisements before redirecting Internet users to third-party
websites. These websites provide either
directly Complainant’s products and the products of competitors, or a series of
links to various additional third-parties, many of whom offer products or
services in direct competition with those offered under Complainant’s PEOPLE WEEKLY,
CNN, and MAPQUEST marks. The Panel finds
that this is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo,
FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of
the <hpcanada.com> domain name to post links to commercial websites and
subject Internet users to pop-up advertisements was not a bona fide offering
of goods or services or a legitimate noncommercial or fair use of the domain
name); see also 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain
name to redirect Internet users to a financial services website, which competed
with the complainant, was not a bona fide offering of goods or
services).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
The <peoplemagazine.com>, <cnnweather.com>, and <mappquest.com> domain names all are confusingly similar to either Complainant’s PEOPLE WEEKLY, CNN, and MAPQUEST marks. The Panel finds that the registration of these three disputed domain names is evidence of a pattern enough to create a presumption of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii), “[t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Furthermore, all three of the disputed domain names redirect
Internet users to websites containing various links to third-parties, some of
whom offer products and services in direct competition with those offered under
Complainant’s mark. The Panel finds this
use to be for the purpose of disrupting Complainant’s business and consequently
evidence of Respondent’s bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum
Finally, the Panel presumes that Respondent is financially
benefiting from the redirection of Internet user to websites that offer
additional links to competitors and related third-parties through the use of
“click-through fees.” Moreover, these
websites, upon redirection, display various pop-up advertisements. This commercially competing use of the
disputed domain names is further evidence that Respondent registered and is
using the <peoplemagazine.com>, <cnnweather.com>,
and <mappquest.com> domain names in bad faith pursuant to Policy
¶ 4(b)(iv). See 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.’”); see also Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from
its diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <peoplemagazine.com>, <cnnweather.com>, and <mappquest.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 10, 2008
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