Time Warner Cable Inc. v. TradeMark Management
Claim Number: FA1105001391117
Complainant is Time Warner Cable Inc. (“Complainant”), represented by Ian V. O'Neill of Holland & Hart LLP, Colorado, USA. Respondent is TradeMark Management (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <timewarnercabletv.com>, registered with Inames Co., Ltd. d/b/a inames.co.kr.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2011; the National Arbitration Forum received payment on May 27, 2011. The Complaint was received in both Korean and English.
On June 1, 2011, Inames Co., Ltd. d/b/a inames.co.kr confirmed by e-mail to the National Arbitration Forum that the <timewarnercabletv.com> domain name is registered with Inames Co., Ltd. d/b/a inames.co.kr and that Respondent is the current registrant of the name. Inames Co., Ltd. d/b/a inames.co.kr has verified that Respondent is bound by the Inames Co., Ltd. d/b/a inames.co.kr 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 June 6, 2011, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of June 27, 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@timewarnercabletv.com. Also on June 6, 2011, the Korean language 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 June 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <timewarnercabletv.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 <timewarnercabletv.com> domain name.
3. Respondent registered and used the <timewarnercabletv.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Time Warner Cable Inc., was founded in 1989 and provides television, video, high-speed dates, wireless, and other information services across 28 states in the U.S. Complainant owns the TIME WARNER CABLE mark which it uses in conjunction with its information services. Complainant holds numerous federal registrations for the TIME WARNER CABLE mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,775,146 issued October 21, 2003).
Respondent, TradeMark Management, registered the <timewarnercabletv.com> domain name on September 25, 2009. The disputed domain name resolves to a directory website with links to numerous third-party websites, including some which directly compete with Complainant’s cable television, Internet, and phone services.
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.
Complainant argues that it has established rights in its TIME WARNER CABLE domain name through registration with a trademark authority. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Moreover, a complainant is not required to register its mark within the country of a respondent so long as there is a trademark registration within some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Here, Complainant holds a number of trademark registrations with the USPTO for its TIME WARNER CABLE mark (e.g. Reg. No. 2,775,146 issued October 21, 2003). The Panel concludes that Complainant has demonstrated its rights in the TIME WARNER CABLE mark through its USPTO registration according to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <timewarnercabletv.com> domain name is confusingly similar to Complainant’s TIME WARNER CABLE mark. Within the disputed domain name is Complainant’s entire mark, changed only by deleting the spaces between the words of the mark, adding the abbreviation of the descriptive word television as “tv,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a descriptive word, which refers to the cable television portion of Complainant’s business, and a gTLD does not adequately distinguish the disputed domain name from Complainant’s mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel also finds that deleting spaces does not serve to avoid a finding of confusing similarity. See Bond & Co. Jewelers, Inc. v. Texas Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s TIME WARNER CABLE mark under Policy ¶ 4(a)(i).
The Panel concludes that Policy ¶ 4(a)(i) has been met.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel held, “It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.” Here, Complainant has made a prima facie case. Respondent failed to submit a response to the Complaint; therefore, the Panel may deem Respondent to have no rights and legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will first look to the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <timewarnercabletv.com> domain name. The WHOIS information identifies the registrant of the disputed domain name as “TradeMark Management,” which is not similar to the domain name. Complainant further alleges Respondent has never been affiliated with Complainant and Complainant has never authorized Respondent to use its TIME WARNER CABLE mark. The Panel finds that Respondent is not commonly known by the disputed domain name, according 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).
Respondent’s <timewarnercabletv.com> domain names redirects Internet users to a website featuring links to third-party websites in direct competition with Complainant’s business within the information services industry. Respondent likely collects click-through fees from these links. The Panel holds that Respondent’s use of the disputed domain name to operate a website which competes with Complainant and for Respondent’s financial benefit is 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)(i). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Complainant also alleges that Respondent offered to sell the disputed domain name to Complainant for $20,000 via <sedo.com> and is actively listing the domain name for sale at <domaintools.com>. The Panel finds that Respondent’s offer to sell <timewarnercabletv.com> in excess of out-of-pocket costs is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant claims that Respondent made an offer to sell the disputed domain name to Complainant for $20,000 and also currently lists the domain name for sale to the general public. The Panel concludes that Respondent’s willingness to sell the <timewarnercabletv.com> domain name evidences bad faith use and registration under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant states that the disputed domain name disrupts its business. Potential customers searching for Complainant online may find Respondent’s website instead and purchase similar goods and services from a competitor as a result. The Panel concludes that Respondent’s registration and use of the disputed domain name does disrupt Complainant’s television and information services business, which constitutes bad faith 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel infers that Respondent likely generates click-through fees from the aforementioned third-party links. Respondent’s use of the confusingly similar disputed domain name to host a website featuring links offering similar goods and services as Complainant may mislead Internet users as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and website content. Respondent tries to capitalize off this confusion through the receipt of click-through fees. The Panel finds that registration and use for such a purpose is evidence of bad faith according to Policy ¶ 4(b)(iv). See 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); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <timewarnercabletv.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 30, 2011
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