Time Warner Cable Inc. v. Fenity Media
Claim Number: FA1109001408766
Complainant is Time Warner Cable Inc. (“Complainant”), represented by Ian V. O'Neill of Holland & Hart LLP, Colorado, USA Respondent is Fenity Media (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ynnaustin.com>, registered with Tucows 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2011; the National Arbitration Forum received payment on September 22, 2011.
On September 23, 2011, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <ynnaustin.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 September 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@ynnaustin.com. Also on September 28, 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 October 24, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ynnaustin.com> domain name is confusingly similar to Complainant’s YNN mark.
2. Respondent does not have any rights or legitimate interests in the <ynnaustin.com> domain name.
3. Respondent registered and used the <ynnaustin.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Time Warner Cable Inc., operates, among other things, a number of 24-hour news channels which it has branded as YNN/Your News Now. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the YNN mark (Reg. No. 3,331,429 registered November 6, 2007).
Respondent, Fenity Media, registered the <ynnaustin.com> domain name on October 22, 2009. The disputed domain name currently passes itself off as Complainant’s website as it displays content pulled from Complainant’s website and heavily features Complainant’s YNN mark and other identifying information.
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 has registered the YNN mark with the USPTO (Reg. No. 3,331,429 registered November 6, 2007). In Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), and AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), the panels held that USPTO trademark registration secured rights in a mark for the purposes of the Policy. Similarly, the Panel here finds that Complainant’s registration of the YNN mark proves that it holds rights to the YNN mark according to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <ynnaustin.com> domain name is confusingly similar to Complainant’s YNN mark because the disputed domain name is comprised only of the mark, the geographic term “austin,” and the generic top-level domain (“gTLD”) “.com.” Panels in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004), found that combining a mark with a geographic term did not overcome a finding of confusing similarity. The panel in Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), among other cases, also established that gTLDs are irrelevant additions under Policy ¶ 4(a)(i). Consistent with these prior opinions, the Panel determines that Respondent’s addition of the geographic term “austin” and the gTLD “.com” is not distinguishing, and Respondent’s <ynnaustin.com> domain name is confusingly similar to Complainant’s YNN mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has proven Policy ¶ 4(a)(i).
Complainant bears the initial burden of presenting a prima facie case against Respondent. Once this burden is met, the responsibility to refute Complainant’s claims and prove rights and legitimate interests shifts to Respondent. 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)). A respondent’s failure to submit is evidence that the respondent lacks rights or legitimate interests in the disputed domain name. See America Online, Inc. v. AOL Int’l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). Nevertheless, the Panel will continue the analysis according to the Policy ¶ 4(c) factors to determine whether such rights or legitimate interests do exist.
Complainant contends that Respondent is not commonly known by the <ynnaustin.com> domain name and has not conducted any business under the disputed domain name other than its previous position as an employee of Complainant. Complainant asserts that Respondent is not, and never has been, associated or affiliated with Complainant or authorized to use the YNN mark except in its limited capacity as a former employee. The WHOIS information, referring to the registrant as “Fenity Media,” supports the conclusion that Respondent is not commonly known by the disputed domain name as it suggests no connection between Respondent and the <ynnaustin.com> domain name. In light of these facts and evidence, the Panel holds that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Complainant asserts that Respondent uses the <ynnaustin.com> domain name to host a website that is identical to and attempts to pass itself off as Complainant’s website by pulling content directly from Complainant’s website and making liberal use of Complainant’s mark and logo. Complainant alleges that the two websites are indistinguishable. The Panel finds that Respondent’s efforts to pass itself off as Complainant indicate that Respondent does not possess rights and legitimate interests in the <ynnaustin.com> domain name as it is making neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”)
The Panel finds Complainant has proven Policy ¶ 4(a)(ii).
In analyzing bad faith under the Policy, the Panel finds that it may look beyond the Policy ¶ 4(b) elements and consider the totality of the circumstances. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); se also Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent’s resolving website at the <ynnaustin.com> domain name is an exact and indistinguishable replica of Complainant’s actual website. Complainant asserts that the content on Respondent’s resolving website is stolen from Complainant’s website and Complainant’s logo and mark are used without authorization. Complainant argues that Respondent’s website attempts to create confusion and mislead Internet users into believing that Respondent’s website is affiliated with, or is actually, Complainant. The Panel holds that these actions indicate that Respondent intends to pass itself off as Complainant, which reveals bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Complainant also alleges that Respondent had actual knowledge of Complainant and Complainant’s rights in the YNN mark at the time it registered the disputed domain name because Respondent was an employee of Complainant who was aware of the YNN mark and Complainant’s intention to expand into the Austin area. The Panel accordingly finds that Respondent had actual knowledge at the time of registration of the <ynnaustin.com> domain name, which supports a finding of bad faith registration and use according to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds 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 <ynnaustin.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 27, 2011
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