national arbitration forum

 

DECISION

 

Time Warner Cable Inc. v. Trade Out Investments Ltd / Tech Support

Claim Number: FA1103001378264

 

PARTIES

Complainant is Time Warner Cable Inc. (“Complainant”), represented by Ian V. O'Neill of Holland & Hart LLP, Colorado, USA.  Respondent is Trade Out Investments Ltd / Tech Support (“Respondent”), Venezuela.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mytwc.com>, registered with Power Brand Center Corp.

 

PANEL

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2011; the National Arbitration Forum received payment on March 16, 2011.

 

On March 22, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <mytwc.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the names.  Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mytwc.com.  Also on March 25, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

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

 

On April 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <mytwc.com> domain name is confusingly similar to Complainant’s TIME WARNER CABLE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <mytwc.com> domain name.

 

3.    Respondent registered and used the <mytwc.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Time Warner Cable Inc., owns the exclusive rights to the TIME WARNER CABLE mark which it uses in connection with its offering of television, voice, high-speed data and wireless Internet services.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its TIME WARNER CABLE mark (e.g., Reg. No. 2,775,146 filed November 12, 2002, issued October 21, 2003).

 

Respondent, Trade Out Investments Ltd / Tech Support, registered the <mytwc.com> domain name on January 16, 2003.  The disputed domain name resolves to a website featuring pay-per-click links.

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant asserts its rights in the TIME WARNER CABLE mark based on its trademark registrations with the USPTO (e.g., Reg. No. 2,775,146 filed November 12, 2002, issued October 21, 2003).  The Panel finds this to be sufficient evidence of Complainant’s rights in its mark, dating back to its filing date, pursuant to Policy ¶ 4(a)(i). See 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); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).

 

Complainant contends that Respondent’s <mytwc.com> domain name is confusingly similar to Complainant’s TIME WARNER CABLE mark.  The disputed domain name contains an abbreviation of Complainant’s TIME WARNER CABLE mark (“TWC”), adds the generic term “my” and adds the generic top-level domain (“gTLD”) “.com.”  Previous panels have found that using an abbreviation of a complainant’s mark, adding the term “my” and adding a gTLD does nothing but render a disputed domain name confusingly similar to said mark. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  Accordingly, the Panel finds Respondent’s <mytwc.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Due to the fact that Complainant has submitted a prima facie case in support of its allegations, the burden of proof is shifted to the Respondent to show that it does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  Because Respondent has failed to respond to the complaint, the Panel may draw the inference that Respondent does not have rights or legitimate interests in the <mytwc.com> domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Nonetheless, the Panel shall examine the record to determine whether or not Respondent has rights under Policy ¶ 4(c).

 

Complainant asserts that Respondent has not been authorized to use the TIME WARNER CABLE mark, nor has Respondent offered any evidence to show that it has been commonly known by the <mytwc.com> domain name.  Additionally, Complainant provides a copy of the WHOIS information, identifying the domain name registrant as “Trade Out Investments Ltd / Tech Support.”  Thus, the Panel finds that Respondent is not commonly known by the <mytwc.com> domain name and lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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 was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent uses the disputed domain name to offer pay-per-click links, including a link to Complainant’s official site and sites of Complainant’s competitors.  The Panel finds such use does not constitute 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use 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 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 Panel finds Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Respondent uses the disputed domain name to display third-party links which are in direct competition with Complainant’s business, as well as to offer a link to Complainant’s official website.  The Panel finds this to be a disruption of Complainant’s business and to constitute bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).

 

Complainant contends that Respondent uses the <mytwc.com> domain name to attract Internet users who are likely searching for Complainant’s official website.  After reaching the disputed domain name, Internet users are likely to become confused as to the sponsorship or affiliation between Respondent and Complainant.  The Panel infers that Respondent profits from this creation of confusion when Internet users click-through the links displayed at its site.  The Panel finds this to be evidence of bad faith registration and use under 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 Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

The Panel finds Policy ¶ 4(a)(iii) is satisfied.

 

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 <mytwc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Judge Harold Kalina (Ret.), Panelist

Dated:  April 28, 2011

 

 

 

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