national arbitration forum

 

DECISION

 

Time Warner, Inc. v. BWI Domain Manager a/k/a Domain Manager a/k/a BWI Domains

Claim Number: FA0811001235722

 

PARTIES

Complainant is Time Warner, Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA.  Respondent is BWI Domain Manager a/k/a Domain Manager a/k/a BWI Domains (“Respondent”), Grand Cayman.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aimicon.net>, <babyloonytunes.com>, <batmanfan.com>, <batmanpatrol.com>, <bluebatmobile.com>, <daffy-duck.com>, <fantasysportsaol.com>, <getnetscapecom.com>, <judgemathis.com>, <kidswbcom.com>, <maqwest.com>, <myaolcom.com>, <peopleweekly.com>, <roadrunnercom.com>, <roadrunnerjobs.com>, <sportsilistrated.com>, <sportsillustratedcnn.com>, <sportsillustratedswimsuitedition.com>, <teentitansporn.com>, <thewbtv.com>, <thwb.com>, <turnerclassicsmovies.com>, <tweetybirdpictures.com>, <tweetybrid.com> and <willywonkagames.com> registered with Rebel.com.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically November 24, 2008; the National Arbitration Forum received a hard copy of the Complaint November 25, 2008.

 

On December 10, 2008, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <aimicon.net>, <babyloonytunes.com>, <batmanfan.com>, <batmanpatrol.com>, <bluebatmobile.com>, <daffy-duck.com>, <fantasysportsaol.com>, <getnetscapecom.com>, <judgemathis.com>, <kidswbcom.com>, <maqwest.com>, <myaolcom.com>, <peopleweekly.com>, <roadrunnercom.com>, <roadrunnerjobs.com>, <sportsilistrated.com>, <sportsillustratedcnn.com>, <sportsillustratedswimsuitedition.com>, <teentitansporn.com>, <thewbtv.com>, <thwb.com>, <turnerclassicsmovies.com>, <tweetybirdpictures.com>, <tweetybrid.com> and <willywonkagames.com> domain names are registered with Rebel.com and that Respondent is the current registrant of the names.  Rebel.com verified that Respondent is bound by the Rebel.com registration agreement and thereby has 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 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 30, 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@aimicon.net, postmaster@babyloonytunes.com, postmaster@batmanfan.com, postmaster@batmanpatrol.com, postmaster@bluebatmobile.com, postmaster@daffy-duck.com, postmaster@fantasysportsaol.com, postmaster@getnetscapecom.com, postmaster@judgemathis.com, postmaster@kidswbcom.com, postmaster@maqwest.com, postmaster@myaolcom.com, postmaster@peopleweekly.com, postmaster@roadrunnercom.com, postmaster@roadrunnerjobs.com, postmaster@sportsilistrated.com, postmaster@sportsillustratedcnn.com, postmaster@sportsillustratedswimsuitedition.com, postmaster@teentitansporn.com, postmaster@thewbtv.com, postmaster@thwb.com, postmaster@turnerclassicsmovies.com, postmaster@tweetybirdpictures.com, postmaster@tweetybrid.com and postmaster@willywonkagames.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.     Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <aimicon.net> is confusingly similar to Complainant’s AIM mark; the <babyloonytunes.com> domain name is confusingly similar to Complainant’s BABY LOONEY TUNES mark; the <batmanfan.com> and <batmanpatrol.com> domain names are confusingly similar to Complainant’s BATMAN markl the <bluebatmobile.com> domain name is confusingly similar to Complainant’s BATMOBILE mark; the <daffy-duck.com> domain name is confusingly similar to Complainant’s DAFFY DUCK mark; the <fantasysportsaol.com> and <myaolcom.com> domain names are confusingly similar to Complainant’s AOL mark; the <getnetscapecom.com> domain name is confusingly similar to Complainant’s NETSCAPE mark; the <kidswbcom.com>, <thewbtv.com> and <thwb.com> domain names are confusingly similar to Complainant’s THE WB mark; the <maqwest.com> domain name is confusingly similar to Complainant’s MAPQUEST mark; the <peopleweekly.com> domain name is confusingly similar to Complainant’s PEOPLE mark; the <roadrunnercom.com> and <roadrunnerjobs.com> domain names are confusingly similar to Complainant’s ROAD RUNNER mark; the <sportsilistrated.com> and <sportsillustratedswimsuitedition.com> domain names are confusingly similar to Complainant’s SPORTS ILLUSTRATED mark; the <sportsillustratedcnn.com> domain name is confusingly similar to Complainant’s SPORTS ILLUSTRATED and CNN marks; the <teentitansporn.com> domain name is confusingly similar to Complainant’s TEEN TITAN mark; the <turnerclassicsmovies.com> domain name is confusingly similar to Complainant’s TURNER CLASSIC MOVIES mark; the <tweetybirdpictures.com> and <tweetybrid.com> domain names are confusingly similar to Complainant’s TWEETY mark; the <willywonkagames.com> domain name is confusingly similar to Complainant’s WILLY WONKA mark; and, the <judgemathis.com> domain name is identical to Complainant’s JUDGE MATHIS mark.

 

2.      Respondent has no rights to or legitimate interests in the <aimicon.net>, <babyloonytunes.com>, <batmanfan.com>, <batmanpatrol.com>, <bluebatmobile.com>, <daffy-duck.com>, <fantasysportsaol.com>, <getnetscapecom.com>, <judgemathis.com>, <kidswbcom.com>, <maqwest.com>, <myaolcom.com>, <peopleweekly.com>, <roadrunnercom.com>, <roadrunnerjobs.com>, <sportsilistrated.com>, <sportsillustratedcnn.com>, <sportsillustratedswimsuitedition.com>, <teentitansporn.com>, <thewbtv.com>, <thwb.com>, <turnerclassicsmovies.com>, <tweetybirdpictures.com>, <tweetybrid.com> and <willywonkagames.com> domain names.

 

3.      Respondent registered and used the <aimicon.net>, <babyloonytunes.com>, <batmanfan.com>, <batmanpatrol.com>, <bluebatmobile.com>, <daffy-duck.com>, <fantasysportsaol.com>, <getnetscapecom.com>, <judgemathis.com>, <kidswbcom.com>, <maqwest.com>, <myaolcom.com>, <peopleweekly.com>, <roadrunnercom.com>, <roadrunnerjobs.com>, <sportsilistrated.com>, <sportsillustratedcnn.com>, <sportsillustratedswimsuitedition.com>, <teentitansporn.com>, <thewbtv.com>, <thwb.com>, <turnerclassicsmovies.com>, <tweetybirdpictures.com>, <tweetybrid.com> and <willywonkagames.com>  domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Time Warner, Inc., is a Fortune 500 company and global leader in the media and entertainment industries.  Complainant has invested substantial sums of money in developing and marketing its products, services, and marks world-wide.  Complainant’s AIM (Reg. No. 2,423,367 issued January 23, 2001), AOL (Reg. No. 1,977,731 issued June 4, 1996), AOL.COM (Reg. No. 2,325,291 issued March 7, 2000), BABY LOONEY TUNES (Reg. No. 2,867,741 issued July 27, 2004), BATMAN (Reg. No. 1,221,720 issued December 28, 1982), BATMOBILE (Reg. No. 1,124,961 issued September 11, 1979), CNN (Reg. No. 1,597,839 issued May 22, 1990), DAFFY DUCK (Reg. No. 1,839,296 issued December 7, 1994), MAPQUEST (Reg. No. 2,129,378 issued January 13, 1998), MAPQUEST.COM (Reg. No. 2,496,784 issued October 9, 2001), NETSCAPE (Reg. No. 2,027,552 issued December 31, 1996), NETSCAPE.COM (Reg. No. 2,923,586 issued February 1, 2005), PEOPLE (Reg. No. 2,697,635 issued March 18, 2003), ROAD RUNNER (Reg. No. 2,000,037 issued September 10, 1996), SPORTS ILLUSTRATED (Reg. No. 754,203 issued August 6, 1963), TEEN TITANS (Reg. No. 882,921 issued December 23, 1969), THE WB (Reg. No. 1,971,247 issued April 30, 1996), TURNER CLASSIC MOVIES (Reg. No. 1,960,664 issued March 5, 1996), TWEETY (Reg. No. 1,302,779 issued October 30, 1984) and WILLY WONKA (Reg. No. 3,080,503 issued April 11, 2006) marks are registered with the United States Patent and Trademark Office (“USPTO”).  Complainant uses the JUDGE MATHIS mark in connection with a nationally syndicated reality-based court television show.  Complainant spends significant sums each year promoting, advertising, and marketing this show. 

 

Respondent, BWI Domain Manager a/k/a Domain Manager a/k/a BWI Domains, registered the following disputed domain names:

 

 

 

The disputed domain names resolve to websites that contain links to third-party commercial sites belonging to Complainant’s competitors.

 

Respondent has been the respondent in at least ten UDRP proceedings resulting in the disputed domain names being transferred to the respective complainants in those cases.  See AMFM, Inc. v. BWI Domain Manager, FA 1084750 (Nat. Arb. Forum Nov. 20, 2007); see also AARP v. BWI Domain Manager, FA 1094042 (Nat. Arb. Forum Nov. 26, 2007); see also American Girl, LLC v. BWI Domain Manager, FA 1104431 (Nat. Arb. Forum Dec. 14, 2007).

 

DISCUSSION

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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.

 

Identical to and/or Confusingly Similar

 

The Panel finds that registration of Complainant’s marks with a governmental trademark authority, in this case the USPTO, is sufficient to establish Complainant’s rights in the AIM, AOL, AOL.COM, BABY LOONEY TUNES, BATMAN, BATMOBILE, CNN, DAFFY DUCK, MAPQUEST, MAPQUEST.COM, NETSCAPE, NETSCAPE.COM, PEOPLE, ROAD RUNNER, SPORTS ILLUSTRATED, TEEN TITANS, THE WB, TURNER CLASSIC MOVIES, TWEETY and WILLY WONKA marks pursuant to Policy ¶ 4(a)(i).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).

 

Registration of Complainant’s JUDGE MATHIS mark with a governmental trademark authority is not necessary to demonstrate its rights in a mark under Policy ¶ 4(a)(i).  Rather, it is sufficient if Complainant can demonstrate common law rights in the mark through a showing of ample secondary meaning.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). 

 

Complainant demonstrated its rights in the JUDGE MATHIS mark beginning in 1999, by capturing 60% of the country in its first syndication bid.  Complainant has invested significant sums in order to market its JUDGE MATHIS mark, as well as to syndicate the reality courtroom show throughout the country.  Through its continuous use of the JUDGE MATHIS mark in connection with the reality court television show since 1999, Complainant has established its common law rights in its mark pursuant to Policy
¶ 4(a)(i).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).  

 

Respondent’s <aimicon.net> domain name is confusingly similar to Complainant’s AIM mark. Respondent attempts to differentiate the incorporated mark by adding the generic term “icon.”  Another difference is the addition of the generic top-level domain (“gTLDs”) “.net.”  These minor alterations do little to abrogate the confusingly similar aspects between Respondent’s disputed domain name and Complainant’s mark.  The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s 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 Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)): see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

Respondent’s <babyloonytunes.com> domain name is confusingly similar to Complainant’s BABY LOONEY TUNES mark. Respondent’s misspelling of widely recognized mark does nothing to distinguish the disputed domain name from Complainant’s mark.  The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).  See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”).

 

Respondent’s <batmanfan.com> and <batmanpatrol.com> domain names are confusingly similar to Complainant’s BATMAN mark. Respondent merely added the generic terms “fan” or “patrol” to Complainant’s mark.  Other differences include the addition of the gTLD “.com.”  These minor alterations do not negate the confusingly similar aspects between Respondent’s disputed domain names and Complainant’s mark.  The Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd., supra; see also Am. Express Co., supra.; see also Trip Network Inc., supra.

 

Respondent’s <bluebatmobile.com> domain name is confusingly similar to Complainant’s BATMOBILE mark.  Minor alterations of Complainant’s mark, in this case the addition of the generic term “blue,” do not negate the confusing similarity between Respondent’s disputed domain name and Complainant’s mark.  The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd., supra; see also Am. Express Co., supra.

 

Respondent’s attempt to differentiate its <daffy-duck.com> domain name by adding a hyphen is irrelevant and does not negate the confusing similarity between Respondent’s disputed domain name and Complainant’s mark.  The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy
¶ 4(a)(i).  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).

 

Respondent’s <fantasysportsaol.com> and <myaolcom.com> domain names are confusingly similar to Complainant’s AOL mark.  Addition of generic terms, such as “.com,” “fantasy sports” and “my,” to Complainant’s mark does not negate the confusing similarity between Respondent’s disputed domain names and Complainant’s mark.  The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd., supra; see also Am. Express Co., supra.

 

Respondent’s <getnetscapecom.com> domain name is confusingly similar to Complainant’s NETSCAPE mark. The additions of generic terms “get” and “.com” do not negate the confusing similarity between Respondent’s disputed domain name and Complainant’s mark.  The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd., supra; see also Am. Express Co., supra.

 

Respondent’s <maqwest.com> domain name is confusingly similar to Complainant’s MAPQUEST mark. Respondent’s misspelling of a widely-recognized mark does nothing to distinguish the disputed domain name from Complainant’s mark.  The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Belkin Components, supra; see also Pfizer Inc., supra.

 

Respondent’s <peopleweekly.com> domain name is confusingly similar to Complainant’s PEOPLE mark. Minor alterations of Complainant’s mark, in this case addition of the generic term “weekly,” does not negate the confusing similarity between Respondent’s disputed domain name and Complainant’s mark.  The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd., supra; see also Am. Express Co., supra.

 

Respondent’s <roadrunnercom.com> and <roadrunnerjobs.com> domain names are confusingly similar to Complainant’s ROAD RUNNER mark. Minor alterations of Complainant’s mark, in this case additions of an extra “com” and the generic term “jobs” does not negate the confusing similarity between Respondent’s disputed domain names and Complainant’s mark.  The Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd., supra; see also Am. Express Co., supra.

 

Respondent’s <sportsilistrated.com> and <sportsillustratedswimsuitedition.com> domain names are confusingly similar to Complainant’s SPORTS ILLUSTRATED mark. The disputed domain names include a misspelling of Complainant’s mark and/or add generic terms, such as “swimsuit edition,” to Complainant’s SPORTS ILLUSTRATED mark.  The Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Belkin Components, supra; see also Am. Express Co., supra.

 

Respondent’s <sportsillustratedcnn.com> domain name is confusingly similar to Complainant’s SPORTS ILLUSTRATED and CNN marks.  Respondent has merely combined two of Complainant’s marks to create the disputed domain name.  The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”).

 

Respondent’s <teentitansporn.com> domain name is confusingly similar to Complainant’s TEEN TITAN mark. Respondent’s addition of “porn” does not negate the confusing similarity between Respondent’s disputed domain name and Complainant’s mark.  The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Mattel, Inc. v. domainsforsalenow@hotmail.com, FA 187609 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has merely added the descriptive word ‘porn’ to Complainant's registered BARBIE mark, and the addition of this word does not create a notable distinction between Complainant's mark and the domain name currently in dispute.”); see also Am. Online, Inc. v. GSD Pty. Ltd., FA 169083 (Nat. Arb. Forum Sept. 2, 2003) (finding that the <icqporn.com> domain name was confusingly similar to the complainant's ICQ mark under Policy ¶ 4(a)(i)).

 

Respondent’s <thwb.com>, <kidswbcom.com> and <thewbtv.com> domain names are confusingly similar to Complainant’s THE WB mark. The disputed domain names include a misspelling of Complainant’s mark and/or add generic terms, such as “kids” and “tv,” to Complainant’s THE WB mark.  The Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Belkin Components, supra; see also Am. Express Co., supra.

 

Respondent’s <turnerclassicsmovies.com> is confusingly similar to Complainant’s TURNER CLASSIC MOVIES mark. Respondent’s misspelling of a widely recognized mark by merely adding an “s” does not distinguish the disputed domain name from Complainant’s mark.  The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).  See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the <barnesandnobles.info> and <barnesandnobles.biz> domain names are confusingly similar to the complainant’s BARNESANDNOBLE.COM mark because the additions of the letter “s” and generic top-level domains to the dominant features of the complainant’s mark do not negate the confusingly similar aspects of the domain names pursuant to Policy ¶ 4(a)(i)); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).

 

Respondent’s <tweetybrid.com> and <tweetybirdpictures.com> are confusingly similar to Complainant’s TWEETY mark.  Respondent’s additions of generic terms to Complainant’s TWEETY mark do not circumvent the confusing similarity between Respondent’s disputed domain names and Complainant’s TWEETY mark.  The Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).  See Belkin Components, supra; see also Am. Express Co., supra.

 

Respondent’s <willywonkagames.com> domain name is confusing similar to Complainant’s WILLY WONKA mark.  Respondent attempts to differentiate the disputed domain name by incorporating the entire mark and adding the generic term “games.”  This minor alteration does not abrogate the confusingly similar aspects between Respondent’s disputed domain name and Complainant’s mark.  The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd., supra; see also Am. Express Co., supra.

 

Respondent’s <judgemathis.com> domain name is identical to Complainant’s JUDGE MATHIS mark.  The elimination of the space between JUDGE and MATHIS does not differentiate the disputed domain name from Complainant’s mark.  The addition of a generic top-level domain (“gTLD”) “.com” is also irrelevant to the analysis.  The Panel finds that Respondent’s <judgemathis.com> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”)  Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case in support of its allegations the burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); 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).  The Panel finds that Complainant’s has alleged a prima facie case pursuant to Policy ¶ 4(a)(ii).

 

As Respondent did not answer the Complaint, the Panel may assume that Respondent lacks rights or legitimate interests in the disputed domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).  However, the Panel chooses to examine the record in consideration of the factors listed under Policy ¶ 4(c).

 

The disputed domain names resolve to sites that provide links to Complainant’s competitors.  Respondent is exploiting the international reputation and notoriety of Complainant’s marks in order to divert Internet users to pay-per-click (“PPC”) sites.  The Panel finds that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). 

 

The WHOIS information identifies Respondent as “BWI Domain Manager a/k/a Domain Manager a/k/a BWI Domains,” and provides no evidence that Respondent is commonly known by any of disputed domain names.  Without further information, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).  

 

By taking advantage of typographical errors, Respondent is using the <babyloonytunes.com>, <maqwest.com>, <sportsilistrated.com> and <thwb.com> domain names to engage in typosquatting.  The Panel finds that these uses of the disputed domain names are evidence that Respondent lacks rights and legitimate interests in these disputed domain names pursuant to Policy ¶ 4(a)(ii).  See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the domain name and its similarity to Complainant’s registered and distinctive mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant cites at least ten UDRP cases in which Respondent was ordered to transfer infringing domain names to the complainants in those cases. See AMFM, Inc. v. BWI Domain Manager, FA 1084750 (Nat. Arb. Forum Nov. 20, 2007); see also AARP v. BWI Domain Manager, FA1094042 (Nat. Arb. Forum Nov. 26, 2007); see also American Girl, LLC v. BWI Domain Manager, FA 1104431 (Nat. Arb. Forum Dec. 14, 2007).  The Panel finds that Respondent has engaged in a pattern of bad faith registration and use, which provides additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Respondent’s use of the confusingly similar domain names to attract Internet users indicates bad faith registration and use of the disputed domain names.  The disputed domain names divert Internet users from Complainant’s business, thereby disrupting Complainant’s business.  The Panel finds that Respondent’s use of the disputed domain names demonstrate bad faith registration and use under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).

 

Further, Complainant alleges that Respondent’s use of the confusingly similar disputed domain names also exploits Complainant’s well-known marks for commercial gain through acquired click-through fees.  The Panel finds that Respondent’s commercial gain through the use of confusingly similar domain names to Complainant’s marks is evidence of registration and use of the disputed domain names in bad faith pursuant to Policy
¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

Typosquatting, in and of itself, is evidence of bad faith registration and use of the disputed domain names as seen with Respondent’s <babyloonytunes.com>  <maqwest.com>, <sportsilistrated.com> and <thwb.com> domain names.  The Panel finds that Respondent’s attempt to divert Internet users through typographical errors is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (“Respondent misspells the Mark with intent to intercept internet users from Complainant’s web site, given the fact that Complainant’s website is a popular website and the Disputed Domain Name is a misspelling of the Mark which is highly likely to occur.  This typosquatting is evidence of bad faith.”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <aimicon.net>, <babyloonytunes.com>, <batmanfan.com>, <batmanpatrol.com>, <bluebatmobile.com>, <daffy-duck.com>, <fantasysportsaol.com>, <getnetscapecom.com>¸<judgemathis.com>, <kidswbcom.com>, <maqwest.com>, <myaolcom.com>, <peopleweekly.com>, <roadrunnercom.com>, <roadrunnerjobs.com>, <sportsilistrated.com>, <sportsillustratedcnn.com>, <sportsillustratedswimsuitedition.com>, <teentitansporn.com>, <thewbtv.com>, <thwb.com>, <turnerclassicsmovies.com>, <tweetybirdpictures.com>, <tweetybrid.com> and <willywonkagames.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: January 19, 2009.

 

 

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