national arbitration forum

 

DECISION

 

Time Warner Cable Inc. v. Taiwan - China Entrepreneurs Organization

Claim Number: FA1207001452714

 

PARTIES

Complainant is Time Warner Cable Inc. (“Complainant”), represented by Alexander Garcia of Holland & Hart LLP, Colorado, USA.  Respondent is Taiwan - China Entrepreneurs Organization (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <twcneo.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2012; the National Arbitration Forum received payment on July 10, 2012.

 

On July 15, 2012, Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <twcneo.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com and that Respondent is the current registrant of the name.  Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com 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 July 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@twcneo.com.  Also on July 19, 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 August 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.  The Panel has issued 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

Complainant asserts trademark rights in TWC and alleges that the disputed domain name is confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant provides television, video, high-speed data, wireless, voice, and other information services across the United States under the trademark TWC.

2.    Complainant is a wholly owned subsidiary of Time Warner, Inc.

3.    Time Warner, Inc. owns, inter alia, United States Federal Trademark Reg. No. 4,072,265 registered Oct. 10, 1995, for TWC.

4.    Complainant is the exclusive licensed user of the trademark TWC.

5.    The disputed domain name was once registered to Complainant.

6.    When Complainant allowed that registration to lapse it was registered by Isaac Goldman.

7.    The domain name was transferred from Isaac Goldman to Respondent.

8.    The disputed domain name resolved to a website that carried hyperlinks to service providers in competition in business with Complainant.

9.    There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark.

 

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."

 

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

(1)  the domain name has been registered and is being used in bad faith.

 

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. 

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

 

Complainant provides evidence of the United States Patent and Trademark Office trademark registration for TWC in the name of its parent company.  Complainant is the exclusive licensee of the trademark according to a sworn statement accompanying the Complaint.  For the purposes of the Policy, the Panel is satisfied that Complainant has trademark rights (see IQAir N. Am., Inc. v. Vancity Holdings / none, FA 1383376 (NAF May 13, 2011); Time Warner Cable Inc. v. Trade Out Investments, Ltd. / Tech. Support, FA 1378264 (NAF Apr. 28, 2011).

 

The disputed domain name incorporates Complainant’s trademark and adds the gTLD “.com” and the integer “NEO”.  For the purposes of comparison, the gTLD can be ignored (see generally, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). 

 

Complainant does not put forward a particularly compelling case for a finding of confusing similarity.  A direct comparison of the trademark TWC with the resultant term, TWCNEO, does not spontaneously cause the Panel to draw a finding of confusing similarity.  Complainant nonetheless asserts that the term “NEO” is a geographic indicator which stands for “North Eastern Ohio”.  Complainant also submits that the term “NEO” may also be understood to mean “new” or “revived”.

 

Panel is not moved by that latter submission since it takes the commonsense view that internet users would only be inclined to give the term “NEO” its meaning of new or revived were that word to prefix the trademark.  Moreover, whilst it is no doubt true that Complainant has used the letters NEO to designate “North Eastern Ohio”, there is no evidence in the Complaint that NEO is a commonly recognized abbreviation for “North Eastern Ohio”. 

 

Panel is entitled to accept all reasonable allegations 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.”).  Panel has in its discretion made a brief internet search of the letters “NEO” and found no immediate reference to North Eastern Ohio, however a search of the words “North Eastern Ohio” does locate a few scant references to the three letter abbreviation.  In the absence of any contradictory evidence, Panel is just satisfied that the letters NEO carry the alleged connotation.

 

In the result, Panel is satisfied that the disputed domain name is confusingly similar to Complainant’s trademark since it is composed essentially of that trademark together only the other non-distinctive material which fails to differentiate the terms in any material manner so as to avoid confusion (see Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) holding that “The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”).

 

Accordingly Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. 

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006);  see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).

 

The publicly available WHOIS information identifies Respondent as “Taiwan-China Entrepreneurs Organization” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name.  Whilst it could be suggested that the letters TW and C stand for Taiwan and China, former panelists have uniformly held that the WHOIS data must be substantially identical to the disputed domain name.

 

There is no evidence that Respondent has any trademark rights.  There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.

 

There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.  Complainant provides evidence that the domain name resolved to a website that carried competing hyperlinks.  Complainant gives no indication of the material now displayed at that website.  Instead, it argues that Respondent’s past use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

 

Panel finds that Complainant has done just enough to establish a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.  In the absence of a Response, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Complainant makes a number of bad faith allegations.  First, it states that Isaac Goldman is a known cybersquatter.  In the absence of evidence showing it to be more likely than not that Respondent is one of Mr Goldman’s creations, former UDRP proceedings against Mr Goldman are irrelevant to the bona fides of Respondent.

 

Secondly, Complainant asserts that:

 

“Respondent has, until the last few days, used the Disputed Domain Name to operate a “pay per click” or “click through” Internet advertising web site, in which advertisers pay a website’s owner when consumers visiting the site click on the advertiser’s links.  Moreover, the advertisements on the Disputed Site promoted and offered competing or complementary services that are competitive with Complainant’s services.”  

 

The Complaint does not tell the Panel what appears at the website at the time of the filing of the Administrative Proceedings.  The information said to support a finding of bad faith use of the domain name appeared “until the last few days”.  Complainant states that Respondent took a transfer of the domain name in or about September 2011.

 

Although there is fluidity in the chronology of events, Panel finds it safe to infer that the allegedly bad faith material was posted to the website at a time when Respondent was the holder of the domain name.

 

Thirdly, Complainant asserts that:

 

“The types of advertisements posted on the Disputed Site, including advertisements for Complainant’s competitors, are dispositive on this issue [of bad faith] and demonstrate Respondent’s actual knowledge of Complainant’s use of, and rights in, the TWC Marks.  These advertisements include links to Complainant, including as “TWC,” and its competitors, namely “Comcast,” “DirectTV,” “Verizon,” and others.”

 

Panel wholly accepts those claims.  Notwithstanding the appearance of competitive links, the website prominently features the TWC trademark and names Complainant more than once.  Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above.  Panel has already found the disputed domain name to be confusingly similar to Complainant’s trademark.  Panel accepts as more likely than not to be true Complainant’s allegation that Respondent receives revenue from this website associated with the disputed domain name.   In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark.

 

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

 

 

Debrett G. Lyons, Panelist

Dated:  August 19, 2012

 

 

 

 

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