Time Warner Cable Inc. v. paulo / Jiri Capcuch
Claim Number: FA1209001463778
Complainant is Time Warner Cable Inc. (“Complainant”), represented by Kazuyo Morita of Holland & Hart LLP, Colorado, USA. Respondent is paulo / Jiri Capcuch (“Respondent”), Czech Republic.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <timewarnercale.com>, registered with Dynadot, LLC, and <timewarnercablr.com> and <timewarnercablenc.com>, registered with Godaddy.Com, LLC.
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 September 21, 2012; the National Arbitration Forum received payment on September 21, 2012.
On September 25, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <timewarnercablr.com> and<timewarnercablenc.com> domain names are registered with Godaddy.com, LLC and that Respondent is the current registrant of the names. Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, LLC 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 25, 2012, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <timewarnercale.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@timewarnercale.com, postmaster@timewarnercablr.com, and postmaster@timewarnercablenc.com. Also on September 28, 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 October 25, 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 issues 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 allegations:
1. Complainant is the second largest cable company in the U.S., providing television, video, high-speed data, wireless, and voice services under the name TIME WARNER CABLE.
2. Since at least as early as 1996, Complainant has maintained an active Internet presence at the domain name <timewarnercable.com>.
3. Complainant is the exclusive licensee of the following trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TIME WARNER CABLE mark:
Reg. No. 2,775,146 registered October 21, 2003;
Reg. No. 3,352,095 registered December 11, 2007; &
Reg. No. 3,972,845 registered June 7, 2011.
4. The WHOIS information for the disputed domain names indicates that Respondent is an individual named Jiri Capcuch.
5. Respondent appears to have acquired the disputed domain names no earlier than November 9, 2005.
6. The disputed domain names are confusingly similar to the TIME WARNER CABLE mark as the <timewarnercale.com> domain name merely deletes the letter “b”, the <timewarnercablr.com> domain name merely replaces the letter “e” with the letter “r,” and the <timewarnercablenc.com> domain name adds the geographic descriptor “nc.”
7. The addition, subtraction and transposing of letters indicates typosquatting.
8. Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent operates the disputed domain names to generate income by using “pay per click” Internet advertising, where advertisers pay Respondent each time a consumer visits the advertiser’s site via the Internet advertisements.
9. The advertising links on the disputed domain names include links to Complainant and Complainant’s competitors, including “DirectTV” and “Dish Network.”
10. The disputed domain names do not appear to actually provide any legitimate services other than redirecting Internet users to Complainant’s competitors for the purpose of collecting click-through revenue.
11. Respondent is not and has never been associated or affiliated with Complainant and Complainant has never authorized Respondent to use Complainant’s mark.
12. Given the fame of the TIME WARNER CABLE mark and its registrations with the USPTO, Respondent was clearly on notice of Complainant’s rights when it registered the disputed domain names. The advertisements on the resolving website to Complainant and Complainant’s competitors also show Respondent’s knowledge.
13. The use of “click through” advertising links on the disputed domain names constitutes evidence of bad faith registration and use as Respondent intended to capitalize on consumer confusion as to the source or affiliation of the resolving website.
14. Diverting potential customers away from Complainant’s business and disrupting its business is further evidence of bad faith under Policy ¶ 4(b)(iii).
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.”).
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 that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and therefore chooses to proceed with the instant proceedings.
Complainant argues that is the exclusive licensee of the following trademark registrations with the USPTO for the TIME WARNER CABLE mark:
Reg. No. 2,775,146 registered October 21, 2003;
Reg. No. 3,352,095 registered December 11, 2007; &
Reg. No. 3,972,845 registered June 7, 2011.
The Panel finds that these USPTO trademark registrations conclusively demonstrate Complainant’s rights in the TIME WARNER CABLE mark, even though Respondent is located in the Czech Republic and not the U.S. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that the <timewarnercale.com>, <timewarnercablr.com> and <timewarnercablenc.com> domain names are confusingly similar to Complainant’s TIME WARNER CABLE. Complainant asserts that the <timewarnercale.com> domain name merely deletes the letter “b,” the <timewarnercablr.com> domain name replaces the letter “e” in “cable” with the letter “r,” and the <timewarnercablenc.com> domain names adds the geographic descriptor “nc.” The Panel notes that the disputed domain names all also remove the space between the terms of the mark and add the generic top-level domain (“gTLD”) “.com.” The Panel finds that these minor spelling changes are non-distinguishing and the disputed domain names are therefore confusingly similar to Complainant’s TIME WARNER CABLE mark pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to 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 alleges that Respondent is not and has never been associated or affiliated with Complainant and Complainant has never authorized Respondent to use Complainant’s mark. Complainant contends that the WHOIS information for the disputed domain names indicates that Respondent is an individual named Jiri Capcuch. Based on this evidence, the Panel determines that Respondent is not commonly known by the disputed domain names and thus lacks rights and legitimate interests under 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 does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant argues that Respondent uses the disputed domain names to operate a pay per click Internet advertising website where advertisers pay a website owner when consumers visit the third-party websites via the advertised links. Complainant further alleges that these advertisements on the disputed domain names promote and offer competing or complimentary services that are competitive with Complainant’s services, such as “DirectTV” and “Dish Network.” The Panel holds that appropriating a complainant’s mark in a disputed domain name to offer advertising links on a pay-per-click website, presumably to receive advertising revenue and referral fees, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has proven this element.
Complainant contends that Respondent features advertisements for competitors on the resolving websites in the form of pay-per-click links with titles such as “DirectTV” and “Dish Network.” Complainant argues that these links divert potential customers away from Complainant’s website and disrupt Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). The Panel agrees and finds accordingly. 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).
Complainant asserts that by providing advertisements to Complainant’s competitors on the resolving websites, Respondent generates income in the form of “click through” revenue. The Panel finds that Respondent’s efforts to attract and confuse Internet users with the confusingly similar disputed domain names and competitive links in order to profit from the pay-per-click fees is evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Finally, Complainant argues that given the fame of the TIME WARNER CABLE mark and its USPTO trademark registrations, Respondent was clearly on notice of Complainant’s rights when Respondent registered the disputed domain names. Complainant also asserts that the types of advertisements on the disputed domain names, including advertisements for Complainant and Complainant’s competitors, are further evidence that Respondent was aware of Complainant’s rights in the mark. Although constructive notice has been held insufficient to support a finding of bad faith, the Panel determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii) due to its actual knowledge of Complainant’s rights in the mark. See Nat’l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) (“[C]onstructive notice does not support a finding of bad faith registration.”); see also Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had “actual knowledge of Complainant’s mark when registering the disputed domain name”).
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 <timewarnercale.com>, <timewarnercablr.com>, and <timewarnercablenc.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 30, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page