Time Warner Inc. v. Son Kim aka Phillip Davis
Claim Number: FA1207001453840
Complainant is Time Warner Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is Son Kim (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <timewarnergroup.net>, registered with Enom, Inc.
The domain name at issue is <timewarner-group.com>, registered with 1&1 Internet Ag.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2012; the National Arbitration Forum received payment on July 18, 2012.
On July 19, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <timewarnergroup.net> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 July 20, 2012, 1&1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <timewarner-group.com> domain name is registered with 1&1 Internet Ag. and that Respondent is the current registrant of the name. 1&1 Internet Ag has verified that Respondent is bound by the 1&1 Internet Ag 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 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@timewarnergroup.net and postmaster@timewarner-group.com. Also on July 27, 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 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <timewarnergroup.net> and <timewarner-group.com> domain names are confusingly similar to Complainant’s TIME WARNER mark.
2. Respondent does not have any rights or legitimate interests in the <timewarnergroup.net> and <timewarner-group.com> domain names.
3. Respondent registered or used the <timewarnergroup.net> and <timewarner-group.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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
(3) 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. 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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds a single entity controls both of the disputed domain names; therefore, there is only one true respondent.
Complainant asserts that it has rights in the TIME WARNER mark, which Complainant claims it uses in connection with television broadcasting, media and entertainment, and online services. Complainant provides the Panel with evidence of its ownership of trademark registrations for the TIME WARNER mark (e.g., Reg. No. 1,816,474 registered January 11, 1994) with the USPTO. In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel held that the registration of a mark with a federal trademark authority is evidence of rights in the mark. Therefore, the Panel finds that Complainant has rights in the TIME WARNER mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <timewarnergroup.net> and <timewarner-group.com> domain names are confusingly similar to the TIME WARNER mark. Complainant argues that, in the disputed domain names, Respondent deletes the space found in Complainant’s mark, adds the generic term “group,” and adds the gTLD “.net” or “.com.” The Panel notes that the <timewarner-group.com> domain name also includes a hyphen. In Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001), the panel held that the addition of a generic term fails to distinguish the disputed domain name from the mark. In Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004), the panel held that additions such as a hyphen and/or gTLD do not distinguish a disputed domain name from the mark within it. In Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), the panel found that the removal of a space was irrelevant to a Policy ¶ 4(a)(i) analysis because spaces are impermissible in a domain name. Therefore, the Panel finds that Respondent’s <timewarnergroup.net> and <timewarner-group.com> domain names are confusingly similar to Complainant’s TIME WARNER mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <timewarnergroup.net> and <timewarner-group.com> domain names. Complainant contends that Respondent is not licensed or otherwise authorized to use the TIME WARNER mark. The Panel notes that the WHOIS record for the <timewarnergroup.net> domain name lists “Phillip Davis” and the WHOIS record for the <timewarner-group.com> domain name lists “Son Kim” as the domain name registrants. Therefore, the Panel finds that Respondent is not commonly known by the <timewarnergroup.net> and <timewarner-group.com> domain names pursuant 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).
Complainant asserts that Respondent’s use of the disputed domain names demonstrates that Respondent lacks rights and legitimate interests in them. Complainant states that the <timewarnergroup.net> and <timewarner-group.com> domain names are used to send e-mails to Complainant’s temporary housing provider in Atlanta to inquire about reserving fully-furnished corporate apartments, while purporting to be Complainant’s corporate travel manager. The Panel finds that Respondent’s use of the <timewarnergroup.net> and <timewarner-group.com> domain names is 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 Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
Complainant asserts that Respondent has developed a pattern of bad faith cybersquatting. Complainant alleges that Respondent’s registration of the two disputed domain names, <timewarnergroup.net> and <timewarner-group.com>, which Complainant argues incorporate Complainant’s TIME WARNER mark, is evidence of this pattern. The panel in Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000), found that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii). Therefore, the Panel finds that Respondent registered and is using the <timewarnergroup.net> and <timewarner-group.com> domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s registration and use of the <timewarnergroup.net> and <timewarner-group.com> domain names were in bad faith. Complainant asserts that the disputed domain names are used to send e-mails to Complainant’s temporary housing provider in Atlanta to inquire about reserving fully-furnished corporate apartments. Complainant alleges that Respondent purports to be Complainant’s corporate travel manager while sending these e-mails. The panel in Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), held that, where the respondent took strides to appear associated with the complainant for fraudulent purposes, the registration and use of the disputed domain name was obviously conducted in bad faith. Therefore, the Panel finds that Respondent’s registration and use of the <timewarnergroup.net> and <timewarner-group.com> domain names to send fraudulent e-mails is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent registered the <timewarnergroup.net> and <timewarner-group.com> domain names with actual knowledge of Complainant’s rights in the TIME WARNER mark. Complainant supports this claim with the following arguments:
1) The TIME WARNER mark is famous;
2) Complainant owns USPTO trademark registrations for the TIME WARNER mark;
3) Respondent’s uses the disputed domain names to appear associated with Complainant;
4) Respondent registered and uses the disputed domain names as a part of a pattern of cybersquatting;
5) Respondent misrepresents itself to Internet users that it is one of Complainant’s employees.
While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. See Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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). Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under 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 <timewarnergroup.net> and <timewarner-group.com> domain names be TRANSFERRED FROM Respondent to Complaint.
John J. Upchurch, Panelist
Dated: August 31, 2012
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