Time Warner, Inc. v. Fit happens
Claim Number: FA0901001241392
Complainant is Time Warner (“Complainant”), represented by James
R. Davis, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <sexandthecityworkout.com> and <skinnybysaturday.com>, registered with Godaddy.com, 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
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 5, 2009, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sexandthecityworkout.com> domain name is confusingly similar to Complainant’s SEX IN THE CITY mark. Respondent’s <skinnybysaturday.com> domain name is identical to Complainant’s SKINNY BY SATURDAY mark.
2. Respondent does not have any rights or legitimate interests in the <sexandthecityworkout.com> and <skinnybysaturday.com> domain names.
3. Respondent registered and used the <sexandthecityworkout.com> and <skinnybysaturday.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Time Warner,
Inc., holds several registrations with the United States Patent and Trademark
Office (“USPTO”) of the SEX IN THE CITY
mark in connection with the famous HBO television show. (i.e. Reg. No. 2,513,906 issued
Respondent registered the <sexandthecityworkout.com> domain name 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
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.
The Panel finds that Complainant has established rights in
the SEX IN THE CITY and
SKINNY BY SATURDAY marks via its registrations with the USPTO. See
Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum
The <sexandthecityworkout.com> domain name consists of
Complainant’s SEX IN THE CITY mark, the generic term “workout,” and the generic
top-level domain (“gTLD”) “.com.” The
additions of a generic term and a gTLD are insufficient to overcome the
confusing similarity that results from using Complainant’s famous mark. Therefore, the Panel finds that the <sexandthecityworkout.com>
domain name is confusingly similar to Complainant’s SEX IN THE CITY mark under
Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain names. If the Panel
finds that Complainant’s allegations establish such a prima facie case,
the burden shifts to Respondent to show that it does indeed have rights or
legitimate interests in the disputed domain names pursuant to the guidelines in
Policy ¶ 4(c). The Panel finds
that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no
rights or legitimate interests in the disputed
domain names pursuant to Policy ¶ 4(a)(ii). Since
no response was submitted in this case, the Panel may presume that Respondent
has no rights or legitimate interests in the disputed domain names. However, the Panel will still examine the
record in consideration of the factors listed in Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb.
Forum
Under Policy ¶ 4(c)(ii), if
Respondent demonstrates it is commonly known by the disputed domain names, then
it will have demonstrated rights or legitimate interests in said name. The Panel finds no evidence in the record
suggesting that Respondent is commonly known by the <sexandthecityworkout.com> or <skinnybysaturday.com> domain names. Complainant asserts that Respondent has no
license or agreement with Complainant authorizing Respondent to use the SEX IN THE CITY or SKINNY
BY SATURDAY marks, and the WHOIS information identifies Respondent as “Fit happens.”
Thus, Respondent has not established rights or legitimate interests in
the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent may also prove it has rights or legitimate
interests in the disputed domain names by showing it is being used 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). The disputed domain names are being used to
direct Internet users to a parking website with a list of links to third-party adult-oriented
websites that presumably generate referral fees for Respondent. Using a domain name that is confusingly
similar or identical to Complainant’s mark to direct Internet users to a list
of links for adult-orientated material is neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use. Therefore,
the Panel finds Respondent does not have any rights or legitimate interests in
the disputed domain names pursuant to Policy ¶¶ 4(c)(i)
or (iii). See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
third-party websites. Because the
disputed domain names are confusingly similar and identical to Complainant’s marks, Internet users accessing Respondent’s
disputed domain names may become confused as to Complainant’s affiliation with
the disputed domain names and resulting websites. Respondent is attempting to profit from this
confusion. Thus, Respondent’s use of the
disputed domain names constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA
680624 (Nat. Arb. Forum
Furthermore, the Panel finds that it may consider the
totality of the circumstances when conducting a Policy ¶ 4(a)(iii)
analysis, and that it is not limited to the enumerated factors in Policy ¶
4(b). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
The Panel finds that Complainant has satisfied 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 <sexandthecityworkout.com> and <skinnybysaturday.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 16, 2009
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