Warner Bros. Entertainment Inc. v. Markov Sergei Nikolaevich
Claim Number: FA0809001225813
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 <tmz-video.com>, registered with Estdomains, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 23, 2008.
On September 29, 2008, Estdomains, Inc. confirmed by e-mail to the National Arbitration Forum that the <tmz-video.com> domain name is registered with Estdomains, Inc. and that Respondent is the current registrant of the name. Estdomains, Inc. has verified that Respondent is bound by the Estdomains, 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 September 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 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@tmz-video.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tmz-video.com> domain name is confusingly similar to Complainant’s TMZ.COM mark.
2. Respondent does not have any rights or legitimate interests in the <tmz-video.com> domain name.
3. Respondent registered and used the <tmz-video.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
One of the aspects of Complainant Warner Bros. Entertainment Inc.’s business is to distribute legitimate media content over the Internet. Complainant uses the <tmz.com> domain name and website to accomplish this task, and registered the TMZ.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,240,696 issued May 8, 2007).
Respondent registered the <tmz-video.com> domain name on June 1, 2008, and uses it to display adult-oriented videos and content.
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.
As a preliminary matter, registration of a mark with an
appropriate governmental authority such as the USPTO confers rights in that
mark to a complainant under an analysis of the UDRP. Since Complainant evidenced its USPTO
registration for the TMZ.COM mark, the Panel finds that Complainant has
established rights in the mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
The next point in the analysis is to determine whether the
disputed domain name is identical or confusingly similar to Complainant’s mark. Respondent’s <tmz-video.com> domain name contains Complainant’s
TMZ.COM mark in its entirety and adds a hyphen and the word “video.” In the Panel’s mind, the hyphen certainly
does not add any distinguishing features, and “video” is a generic word that
can aptly describe the services promoted by Complainant under its TMZ.COM
mark. Therefore, the Panel finds that
Respondent’s <tmz-video.com>
domain name is confusingly similar to Complainant’s TMZ.COM mark pursuant to
the analysis done under Policy ¶ 4(a)(i). See Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <tmz-video.com> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
In the analysis of Policy ¶ 4(c)(ii), which examines whether the respondent is commonly known by the disputed domain name, the Panel notes that the WHOIS information identifies Respondent as “Markov Sergei Nikolaevich.” Furthermore, Complainant has alleged in its Complaint that Respondent is not commonly known by the <tmz-video.com> domain name, and Respondent did not submit a response to counter this allegation. Therefore, based on the evidence available in the record, the Panel concludes that Respondent is not commonly known by the <tmz-video.com> domain name pursuant to Policy ¶ 4(c)(ii) and lacks rights and legitimate interests on this basis. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name).
Panels typically consider the analyses of Policy ¶¶ 4(c)(i) and (iii) conjunctively since both concern the
respondent’s use of the disputed domain name, and the Panel will do the same
here. Respondent is using the <tmz-video.com> domain name to
display adult-oriented videos and content.
This fact alone is sufficient to conclude that Respondent is not using
the <tmz-video.com> domain
name in connection with a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) since the use tarnishes
Complainant’s TMZ.COM mark for Respondent’s own commercial gain. See Yahoo! Inc. v.
Zuccarini, FA 183997 (Nat. Arb. Forum Oct. 20, 2003) (“Respondent's use of the disputed
domain names to redirect Internet users to pornographic websites, where the
names were selected specifically for the purpose of trading on the goodwill of
Complainant's marks, cannot qualify as a bona fide offering of goods or
services or as a legitimate noncommercial or fair use of the names under the
Policy.”); see also Vivendi Universal Games v. Chang,
FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not
use a domain name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use because the respondent used
the domain name to divert Internet users seeking the complainant's goods or
services to adult-oriented material and links, while presumably earning a
commission or referral fees from advertisers).
Since the elements of Policy ¶ 4(c) favor Complainant, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has contended in its Complaint that Respondent is intentionally using the <tmz-video.com> domain name in attempt to attract Internet users to the resolving website for Respondent’s own commercial gain in violation of Policy ¶ 4(b)(iv). The Panel agrees, and finds that Respondent is attempting to profit off of the goodwill associated with Complainant’s TMZ.COM mark. Therefore, the Panel concludes that Respondent’s registration and use of the <tmz-video.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
In addition, previous panels have held that using a disputed domain name to display adult-oriented content constitutes bad faith registration and use in and of itself. The Panel concurs with these previous panels and makes the same finding in this case with respect to the <tmz-video.com> domain name pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).
Based upon the foregoing analysis, the Panel concludes that
Policy ¶ 4(a)(iii) has been satisfied in Complainant’s
favor.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tmz-video.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 5, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum