Time Warner Inc. v PrivacyProtect.org / Domain Admin
Claim Number: FA1207001455017
Complainant is Time Warner Inc. (“Complainant”), represented by Brian J. Winterfeldt of Steptoe & Johnson LLP, Washington D.C., USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <timewarnes.com>, <myservicestimewarnercable.com>, and <switchtotimewarnercable.com>, registered with Registermatrix.Com Corp.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2012; the National Arbitration Forum received payment on July 25, 2012.
On July 30, 2012, Registermatrix.Com Corp. confirmed by e-mail to the National Arbitration Forum that the <timewarnes.com>, <myservicestimewarnercable.com>, and <switchtotimewarnercable.com> domain names are registered with Registermatrix.Com Corp. and that Respondent is the current registrant of the names. Registermatrix.Com Corp. has verified that Respondent is bound by the Registermatrix.Com Corp. 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 August 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@timewarnes.com, postmaster@myservicestimewarnercable.com, and postmaster@switchtotimewarnercable.com. Also on August 15, 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 September 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the panel finds Complainant is entitled to the relief requested.
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.”).
Complainant asserts that it registered the TIME WARNER mark with the USPTO (e.g., Reg. No. 1,816,474 registered January 11, 1994). Complainant submits multiple trademark certificates issued to it by the USPTO to support its assertion. Based upon the evidence provided, the Panel concludes that Complainant established its rights in the TIME WARNER mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); 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).
Complainant also asserts that Respondent’s <timewarnes.com>, <myservicestimewarnercable.com>, and <switchtotimewarnercable.com> domain names are confusingly similar to Complainant’s TIME WARNER mark. The Panel notes that the <myservicestimewarnercable.com> and <switchtotimewarnercable.com> domain names both include the entire mark without the space between the terms, while the <timewarnes.com> domain name substitutes an “s” for the final “r” in the mark. The Panel also notes that the disputed domain names incorporate the generic top-level domain (“gTLD”) “.com,” while separately including the terms “my,” “services,” “switch,” “to,” and/or “cable.” The Panel finds that Respondent failed to sufficiently differentiate the disputed domain names from Complainant’s mark and concludes that Respondent’s <timewarnes.com>, <myservicestimewarnercable.com>, and <switchtotimewarnercable.com> 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 Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
Complainant has proven this element.
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 claims that Respondent is not commonly known by the disputed domain names. The Panel notes Respondent failed to provide any evidence to demonstrate that it is commonly known by the disputed domain names. The Panel also notes that the WHOIS information for the disputed domain names identify the registrant as “PrivacyProtect.org / Domain Admin.” Thus, the Panel concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also claims 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. Complainant states that Respondent resolves the disputed domain names to websites offering pay-per-click links to Complainant and Complainant’s competitors. As a result, the Panel finds Respondent’s conduct does not qualify as 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. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant argues that Respondent’s <timewarnes.com> domain name is a typosquatted version of Complainant’s TIME WARNER mark. The disputed domain name merely removes the “r” and places an “s” in its place. The concludes that Respondent’s <timewarnes.com> domain name is an example of typosquatting and finds Respondent’s typosquatting of this disputed domain name indicates a lack of rights and legitimate interests in the domain under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
Complainant has proven this element.
Complainant alleges that Respondent engaged in a pattern of bad faith registration in this dispute by registering multiple domains in one instance and registering multiple other domain names containing the marks of third parties. There are three domain names included in this dispute. The named Respondent in this matter is “PrivacyProtect.org / Domain Admin,” which is a privacy service commonly used by domain name registrants. As a result, the Panel notes that the domain names registered regarding the third party marks may not be the actual registrant in this case, but an entity using the same privacy shield. Therefore, the Panel finds Respondent’s registration of multiple domain names in this dispute indicates bad faith registration and use under Policy ¶ 4(b)(ii), while declining to analyze whether the domain name registrations regarding the third-party marks establish bad faith. See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Complainant also alleges that Respondent intends to disrupt Complainant’s business through the disputed domain names. Complainant states that Respondent resolves the disputed domain names to websites offering pay-per-click links to Complainant and Complainant’s competitors. The Panel finds Respondent’s disputed domain name disrupts Complainant’s business and concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii). See 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).
Complainant contends that Respondent intentionally attempts to attract, for commercial gain, Internet users to its websites. Complainant states that Respondent resolves the disputed domain names to websites offering pay-per-click links to Complainant and Complainant’s competitors. The Panel finds that Respondent is attempting to confuse Internet users into patronizing Respondent’s website then gaining commercially from that confusion and concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See 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).”).
Complainant also contends that Respondent’s <timewarnes.com> domain name is a typosquatted version of Complainant’s TIME WARNER mark. The Panel finds that Respondent engaged in typosquatting when Respondent composed the <timewarnes.com> domain name in its present form and concludes Respondent’s conduct supports a finding of bad faith registration and use of the <timewarnes.com> domain name under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Complainant posits that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the TIME WARNER mark. Complainant states that the fame and notoriety of its TIME WARNER mark make it impossible for Respondent to be unaware of Complainant’s rights in the mark. The Panel finds Respondent had actual knowledge of Complainant’s rights in the TIME WARNER mark when Respondent registered the disputed domain names and concludes that Respondent did so in bad faith under Policy ¶ 4(a)(iii). See 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).
Complainant has proven this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <timewarnes.com>, <myservicestimewarnercable.com>, and <switchtotimewarnercable.com> domain names be TRANSFERRED from Respondent to Complainant.
/S/ Karl V. Fink
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 17, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page