national arbitration forum

 

DECISION

 

Time Warner Inc. v. mga enterprises limited

Claim Number: FA1201001426479

 

PARTIES

Complainant is Time Warner Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington D.C., USA.  Respondent is mga enterprises limited (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <accesstimewarnercable.com>, <timewarnercalble.com>, <timewarnerdsl.com>, and <timewarnersc.com>, registered with GoDaddy.com, Inc.

 

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2012; the National Arbitration Forum received payment on January 25, 2012.

 

On January 27, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <accesstimewarnercable.com>, <timewarnercalble.com>, <timewarnerdsl.com>, and <timewarnersc.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 February 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2012 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@accesstimewarnercable.com, postmaster@timewarnercalble.com, postmaster@timewarnerdsl.com, and postmaster@timewarnersc.com.  Also on February 3, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <accesstimewarnercable.com>, <timewarnercalble.com>, <timewarnerdsl.com>, and <timewarnersc.com> domain names are confusingly similar to Complainant’s TIME WARNER mark.

 

2.    Respondent does not have any rights or legitimate interests in the <accesstimewarnercable.com>, <timewarnercalble.com>, <timewarnerdsl.com>, and <timewarnersc.com> domain names.

 

3.    Respondent registered and used the <accesstimewarnercable.com>, <timewarnercalble.com>, <timewarnerdsl.com>, and <timewarnersc.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Time Warner Inc., owns multiple trademark registrations for the TIME WARNER mark issued by the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,816,474 registered January 11, 1994).  Complainant uses the mark as its brand name in the television, print, and media industries.

 

Respondent, mga enterprises limited, registered the <accesstimewarnercable.com>, <timewarnerdsl.com>, and <timewarnersc.com> domain names on December 14, 2005 and the <timewarnercalble.com> domain name on December 20, 2005.  The disputed domain names resolve to a pay-per-click website offering links to Complainant and its competitors.  Respondent has been a party to multiple adverse UDRP proceedings.

 

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

 

The Panel finds that Complainant has established its rights in the TIME WARNER mark under Policy ¶ 4(a)(i) by registering it with the USPTO.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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).

 

Respondent’s disputed domain names are confusingly similar to its TIME WARNER mark.  The <accesstimewarnercable.com>, <timewarnerdsl.com>, <timewarnersc.com>, and <timewarnercalble.com> domain names all include the entire TIME WARNER mark, remove the space between terms, and add the generic top-level domain (“gTLD”) “.com.”  The disputed domain names also include one or more of the terms “access,” “cable,” “calble,” “dsl” or “sc,” all of which refer to Complainant’s business.  However, the distinctive characteristic of the disputed domain names is Complainant’s TIME WARNER mark.  Thus, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s TIME WARNER mark under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. 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)); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has successfully shifted the burden of proof to Respondent by making a prima facie case indicating that Respondent lacks rights or legitimate interests in the disputed domain name.  See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“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.”).  Because Respondent failed to file a response in this matter, the Panel may assume that it lacks rights or legitimate interests in the disputed domain name.  See 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 will examine the entire record to determine whether Respondent has rights or legitimate interests in the disputed domain name.

 

Complainant asserts that Respondent is not commonly known by the disputed domain name.  The WHOIS information identifies the registrant of the disputed domain name as “mga enterprises limited.”  Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See 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); 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 also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.  According to the evidence provided by Complainant, the disputed domain names resolve to a pay-per-click websites offering links to Complainant and its competitors.  Panels routinely find that such a use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, 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)).  Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent has engaged in a pattern of registering and using infringing domain names in bad faith, demonstrated by the previous UDRP cases against Respondent.  See Morgan Stanley v. mga enterprises limited, FA 635051 (Nat. Arb. Forum Mar. 10, 2006); see also Lauth Group Inc. v. MGA Enterprises Limited, FA 1124267 (Nat. Arb. Forum Feb. 6, 2008); see also Exxon Mobil Corp. v. mga enterprises limited, FA 1273445 (Nat. Arb. Forum Aug. 26, 2009); see also Hasbro, Inc. v. mgaenterpriseslimited, FA  281068 (Nat. Arb. Forum Oct. 1, 2009); see also Univision Commc’ns Inc. v. mga enterprises limited, FA 1336097 (Nat. Arb. Forum Sept. 6, 2010); see also Vanguard Trademark Holdings USA LLC v. mga enterprises limited, FA 1337424 (Nat. Arb. Forum Sept. 9, 2010); see also Allstate Ins. Co. v. mga enterprises limited, FA 1337424 (Nat. Arb. Forum Aug. 20, 2011); see also Enterp. Holdings, Inc. v. mga enterprises limited, FA 1404552 (Nat. Arb. Forum Sept. 29, 2011); see also Hilton Hotels Corp. v. mga enterprises limited, D2010-1064 (WIPO Aug. 27, 2010); see also Humana Inc. v. mga enterprises limited, D2006-1405 (WIPO Feb. 23, 2007).  The Panel finds that Respondent has engaged in a pattern of infringing domain name registrations indicating bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).

 

Respondent’s disputed domain names resolve to pay-per-click websites offering links to Complainant and its competitors.  By offering links to Complainant’s competitors, Respondent has potentially diverted customers from Complainant to other companies.  Therefore, the Panel finds that Respondent’s disputed domain names disrupt Complainant’s business, establishing 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)).

 

Respondent’s websites offer links to Complainant and multiple other businesses, some of which compete with Complainant.  Respondent presumably collects a click-through fee for each Internet user it diverts to the linked sites, which constitutes bad faith under Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also 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).”).  Therefore, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv) because it is attempting to commercially gain from the confusingly similar websites.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <accesstimewarnercable.com>, <timewarnerdsl.com>, <timewarnersc.com>, and <timewarnercalble.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  March 8, 2012

 

 

 

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