Warner Bros. Entertainment Inc. v. Jon Dives d/b/a warnerfilms
Claim Number: FA0902001248657
Complainant is Warner Bros. Entertainment Inc. (“Complainant”), represented by J.
Andrew Coombs, of J. Andrew Coombs, A Professional
Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <warnertelevision.com>, <warnertelevison.com>, <warnerworldwide.com>, <warnercasting.com>, <warnerdistribution.com>, and <warnerfilms.com>. The <warnertelevision.com>, <warnertelevison.com>, <warnerworldwide.com>, <warnercasting.com>, and <warnerdistribution.com> domain names are registered with Wild West Domains, Inc. The <warnerfilms.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint
to the National Arbitration Forum electronically on
On
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <warnertelevision.com>, <warnertelevison.com>, <warnerworldwide.com>, <warnercasting.com>, <warnerdistribution.com>, and <warnerfilms.com> domain names are confusingly similar to Complainant’s WARNER BROS. mark.
2. Respondent does not have any rights or legitimate interests in the <warnertelevision.com>, <warnertelevison.com>, <warnerworldwide.com>, <warnercasting.com>, <warnerdistribution.com>, and <warnerfilms.com> domain names.
3. Respondent registered and used the <warnertelevision.com>, <warnertelevison.com>, <warnerworldwide.com>, <warnercasting.com>, <warnerdistribution.com>, and <warnerfilms.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Warner Bros. Entertainment Inc., holds several trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
the WARNER BROS. mark (i.e., Reg. No. 1,026,466 issued
Respondent registered the <warnertelevision.com> and <warnertelevison.com>
domain names 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’s registration of its
WARNER BROS. mark with the USPTO is sufficient to establish Complainant’s
rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum
The <warnertelevision.com>, <warnertelevison.com>,
<warnerworldwide.com>, <warnercasting.com>, <warnerdistribution.com>,
and <warnerfilms.com> domain names contain the first word
of Complainant’s WARNER BROS. mark followed by a descriptive word related to
Complainant’s business and the generic top-level domain (“gTLD”) “.com.” In the case of the <warnertelevison.com> domain name the descriptive word is mispelled by
leaving out the second “i” in the word “television.” The Panel finds that all of the disputed
domain names are confusingly similar to Complainant’s WARNER BROS. mark
pursuant to Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
The Panel finds that the 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
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by any of the disputed domain names. Complainant asserts that Respondent has no
license or agreement with Complainant authorizing Respondent to use the WARNER
BROS. mark, and the WHOIS information identifies Respondent as “Jon Dives d/b/a warnerfilms.” Respondent lists itself as “warnerfilms” for
the <warnerfilms.com> domain
name. However, no affirmative evidence
was provided that Respondent actually is commonly known by “warnerfilms.” Thus, the Panel finds that Respondent has not
established rights or legitimate interests in any of the disputed domain names
under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb.
Forum
The disputed domain names are being used to direct Internet
users to parking websites with lists of links to competing third-party websites
that presumably generate referral fees for Respondent. Using domain names that are confusingly
similar to Complainant’s mark to direct Internet users to a commercial list of
links 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 name
pursuant to Policy ¶¶ 4(c)(i) or (iii). See Skyhawke Techns., LLC
v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum
The Panel finds that the Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <warnertelevision.com>, <warnertelevison.com>,
<warnerworldwide.com>, <warnercasting.com>, <warnerdistribution.com>,
and <warnerfilms.com> domain names to resolve to websites
that contain links for third-party websites, some of which directly compete
with Complainant. The Panel finds
Respondent is using the confusingly similar domain names to divert Internet
users to Complainant’s competitors. This
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO
The websites that resolve from the disputed domain names display advertisements and
links to third-party websites, some of which are related to Complainant’s WARNER
BROS. mark. The Panel infers that
Respondent receives pay-per-click fees for these links and advertisements. Since the disputed domain names are
confusingly similar to Complainant’s mark, Internet users are likely to become
confused as to Complainant’s affiliation or sponsorship of the disputed domain
names and resolving websites. Respondent
is seeking to profit from this confusion by hosting pay-per-click links and advertising
on the resolving websites. The Panel
finds this is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Allianz of Am. Corp. v.
Bond, FA
680624 (Nat. Arb. Forum
The Panel finds that the 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 <warnertelevision.com>, <warnertelevison.com>, <warnerworldwide.com>, <warnercasting.com>, <warnerdistribution.com>, and <warnerfilms.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 16, 2009
National
Arbitration Forum