national arbitration forum

 

DECISION

 

Time Warner Inc. v. Domain Administrator aka Fundacion Private Whois aka PPA Media Services a/k/a Ryan G Foo

Claim Number: FA1212001475851

 

PARTIES

Complainant is Time Warner Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA.  Respondent is Domain Administrator a/k/a Fundacion Private Whois (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <rottentomates.com>, <hannabarbera.org>, <timewernercable.com>, <timewarnmercable.com>, <timewarnrercable.com>, <timewarnrrcable.com>, <timewarnerondemand.net>, <timewarningcable.com>, <timewarncable.com>, <timewarnercablwe.com>, <rtimewarnercable.com>, <timewarnercablew.com>, and <timewarnertcable.com>, registered with Internet.bs Corp.

 

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2012; the National Arbitration Forum received payment on December 13, 2012.

 

On December 26, 2012 and December 31, 2012, Internet.bs Corp confirmed by e-mail to the National Arbitration Forum that the <rottentomates.com>, <hannabarbera.org>, <timewernercable.com>, <timewarnmercable.com>, <timewarnrercable.com>, <timewarnrrcable.com>, <timewarnerondemand.net>, <timewarningcable.com>, <timewarncable.com>, <timewarnercablwe.com>, <rtimewarnercable.com>, <timewarnercablew.com>, and <timewarnertcable.com> domain names are registered with Internet.bs Corp and that Respondent is the current registrant of the names.  Internet.bs Corp has verified that Respondent is bound by the Internet.bs 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 January 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2013 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@rottentomates.com, postmaster@hannabarbera.org, postmaster@timewernercable.com, postmaster@timewarnmercable.com, postmaster@timewarnrercable.com, postmaster@timewarnrrcable.com, postmaster@timewarnerondemand.net, postmaster@timewarningcable.com, postmaster@timewarncable.com, postmaster@timewarnercablwe.com, postmaster@rtimewarnercable.com, postmaster@timewarnercablew.com, and postmaster@timewarnertcable.com.  Also on January 4, 2013, 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 January 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant’s made the following contentions.

1. Policy ¶ 4(a)(i): Complainant’s rights in the marks and the confusing similarity of the domain names.

2. Complainant owns rights in the following United States Patent & Trademark Office (USPTO) trademark registrations:

3. Respondent’s domain names are confusingly similar to Complainant’s marks.  Each domain name is a misspelling of one of Complainant’s marks with a variant of a generic top-level domain name.

4. Policy ¶ 4(a)(ii): Respondent has no rights or legitimate interests in respect of the domain names.

5. Respondent is not named or commonly known as any of Complainant’s marks.  Complainant has not authorized Respondent to use any of its marks.

6. Respondent cannot claim in good faith that it has made a legitimate noncommercial or fair use of the domain names.

7. Policy ¶ 4(a)(iii): the domain names have been registered and are being used in bad faith.

 

8. Respondent has been ordered to transfer infringing domain names to Complainant in more than two dozen UDRP cases in 2012 alone.

9. Respondent’s bad faith use of the disputed domains under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) is shown by the commercial websites associated with the domain names, which include links to third-party sites that, in many cases, provide services that compete with Complainant’s.

9. Respondent has at least constructive knowledge of Complainant’s rights in its marks by virtue of federal trademark registrations that were in existence when Respondent registered the domain names.  Given Complainant’s global reputation and the fact that the domain names correlate to the services Complainant provides under its marks, it is inconceivable that Respondent did not have actual knowledge of Complainant’s rights in its marks when registering the domain names.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant is a prominent United States company with extensive interests in media, entertainment, publishing and related industries.

2.    Complainant owns rights in the following United States Patent & Trademark Office (USPTO) trademark registrations:

(a)ROTTEN TOMATOES (Reg. No. 2,492,006 registered on September 25, 2001)

(b)HANNA-BARBERA (Reg. No. 1,323,027 registered on March 5, 1985)

(c)TIME WARNER

(d)TIME WARNER CABLE (Reg. No. 3,972,845 registered on June 7, 2011)

(e)TIME WARNER Cable and Design (Reg. No. 2,775,146 registered on October 21, 2003).

(f)TIME WARNER CENTER (Reg. No. 2,971,049 registered on July 19, 2005).

3.    Respondent registered each of the following domain names on the  corresponding dates set out hereunder:

4.    Respondent has caused the domain names to resolve to commercial websites associated with the domain names, which include links to third-party sites that, in many cases, provide services that compete with Complainant’s services.

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

(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.” 

 

Complainant contends that despite the fact Respondent uses aliases in the WHOIS records, it appears clear that a single entity owns and controls the domain names.  Complainant bases its arguments of a common ownership and control of the domain names upon several prior UDRP proceedings where past panels have determined that a single individual is operating as Fundacion Private Whois, Domain Administrator, PPA Media Services, and Ryan G. Foo.  See, e.g., Inter-Continental Hotels Corp. v. PPA Media Servs., Ryan G Foo / Fundacion Private Whois Domain Admin., D2012–1095 (WIPO July 12, 2012).

                                          

The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings. 

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims ownership in its marks by way of the following USPTO trademark registrations:

(a)ROTTEN TOMATOES (Reg. No. 2,492,006 registered on September 25, 2001)

(b)HANNA-BARBERA (Reg. No. 1,323,027 registered on March 5, 1985)

(c)TIME WARNER:

a.    in regards to cable television (Reg. No. 1,816,474 registered on January 11, 1994).

b.    In regards to prerecorded audio cassettes (Reg. No. 1,940,977 registered on December 12, 1995).

(d)TIME WARNER CABLE (Reg. No. 3,972,845 registered on June 7, 2011)

(e)TIME WARNER Cable and Design (Reg. No. 2,775,146 registered on October 21, 2003).

(f)TIME WARNER CENTER (Reg. No. 2,971,049 registered on July 19, 2005).

The Panel finds that these USPTO trademark registrations sufficiently establish Complainant’s rights in its marks.  See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).  The Panel also finds that it is irrelevant whether or not Respondent is domiciled in the United States.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).  Therefore the Panel finds that Complainant has established rights in its marks under Policy ¶ 4(a)(i).

 

The second question that arises is whether each of the disputed domain names is identical or confusingly similar to one of Complainant’s USPTO trademark registrations referred to above. Complainant contends that Respondent’s domain names are confusingly similar to the marks.  Complainant contends that each domain name is a misspelling of one of Complainant’s marks with a variant of a generic top-level domain name (gTLD) and it is apparent that this is correct.  The Panel compares the<rottentomates.com> domain name with the ROTTEN TOMATOES mark. The Panel notes that Respondent has deleted the last “o” in the word “tomatoes” to form the domain name, removed the space from between the terms and added the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the deletion of a mere letter cannot distinguish a domain name from a mark.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel also finds that both the addition of a gTLD and the deletion of a space from an otherwise registered mark fail to differentiate the domain name from the mark.  See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel therefore finds that the <rottentomates.com> domain name is confusingly similar to the ROTTEN TOMATOES mark under Policy ¶ 4(a)(i).

 

The Panel next compares the <hannabarbera.org> domain name with the HANNA-BARBERA mark. The Panel notes that Respondent deleted the hyphen from the mark in creating its disputed domain name and added the gTLD “.org.”  The Panel agrees that deleting a hyphen and adding a gTLD fails to differentiate the domain name from Complainant’s registered mark under Policy ¶ 4(a)(i).  See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore concludes that the <hannabarbera.org> domain name is confusingly similar to the HANNA-BARBERA mark pursuant to Policy ¶ 4(a)(i).

 

The Panel then compares the <timewarnerondemand.net> domain name with the TIME WARNER mark. The Panel notes that Respondent added the phrase “ondemand” to the disputed domain name, as well as removing the space between the terms and adding the gTLD “.net.”  The Panel finds such changes do not differentiate the domain name from the mark, especially when the term “ondemand” merely describes a type of broadcasting service that is offered in Complainant’s field.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  The Panel therefore finds that the <timewarnerondemand.net> domain name is confusingly similar to the TIME WARNER mark under Policy ¶ 4(a)(i).

 

The Panel also compares the <timewernercable.com>, <timewarnmercable.com>, <timewarnrercable.com>, <timewarnrrcable.com>, <timewarningcable.com>, <timewarncable.com>, <timewarnercablwe.com>, <rtimewarnercable.com>, <timewarnercablew.com>, and <timewarnertcable.com> domain names with the TIME WARNER CABLE mark. The Panel notes that each of these disputed domain names contains a misspelled version of the TIME WARNER CABLE mark.  Previous panels have found that the mere misspelling of a mark does not differentiate the name from the mark.  See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”).  Past panels have also held that the addition of letters to a registered mark fails to differentiate a domain name from a mark.  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”).  The Panel also notes that these disputed domain names delete the space between the terms of the mark and add a gTLD. Previous panels have concluded that these changes do not remove a disputed domain name from the realm of confusing similarity. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). For these reasons, the Panel concludes that the <timewernercable.com>, <timewarnmercable.com>, <timewarnrercable.com>, <timewarnrrcable.com>, <timewarningcable.com>, <timewarncable.com>, <timewarnercablwe.com>, <rtimewarnercable.com>, <timewarnercablew.com>, and <timewarnertcable.com> domain names are confusingly similar to the TIME WARNER CABLE mark under Policy ¶ 4(a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a) Respondent has chosen to take Complainant’s USPTO trademark registrations referred to above and to use them in the manner described above to create a series of domain names and making the changes and additions to them also described above;

(b) Respondent has then caused the domain names to resolve to commercial websites associated with the domain names, which include links to third-party sites that, in many cases, provide services that compete with Complainant’s services;

(c) Respondent has engaged in these activities without the consent or approval

of Complainant;

(d) Complainant submits that Respondent is not named or commonly known as any of Complainant’s marks.  Complainant contends that it has not authorized Respondent to use any of its marks.  The Panel notes that the WHOIS information variously lists “PPA Media Services / Ryan G Foo” and “Domain Administrator / Fundacion Private Whois” as the registrant of the names.  Previous panels have concluded that in the absence of any affirmative evidence linking a respondent to a domain name, the respondent cannot be determined to have been commonly known by the domain names.  See 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).  The Panel agrees and finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);

 

(e) Complainant next contends that Respondent cannot claim in good faith that it has made a legitimate noncommercial or fair use of the domain names.  The Panel notes that the <timewarnerondemand.net> and <hannabarbera.org> domain names resolve to websites that purport to offer various different services to Internet users.  The Panel further notes that the <timewarnerondemand.net> domain name solicits Internet users to use its television programming services.  See Complainant’s Ex. G.  The Panel finds that such a use fails to comport with a legitimate noncommercial or fair use, or a bona fide offering of goods, because Respondent uses the confusingly similar <timewarnerondemand.net> domain name to offer goods that compete with Complainant’s TIME WARNER services.  See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).  The Panel also finds that even though the <hannabarbera.org> domain name resolves to a website promoting unrelated services in teaching the English language, such a use does not constitute a bona fide offering of goods or services, or a noncommercial or fair use because Respondent is merely diverting customers looking for TIME WARNER services to Respondent’s own English language services.  See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).  The Panel agrees and concludes that the <timewarnerondemand.net> and <hannabarbera.org> domain names fail to provide a Policy ¶ 4(c)(i) bona fide offering of goods or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

(f)The Panel notes that the remaining <rottentomates.com>, <timewernercable.com>, <timewarnmercable.com>, <timewarnrercable.com>, <timewarnrrcable.com>, <timewarningcable.com>, <timewarncable.com>, <timewarnercablwe.com>, <rtimewarnercable.com>, <timewarnercablew.com>, and <timewarnertcable.com> domain names resolve to websites that are dominated by hyperlinks to websites which compete with Complainant.  See Complainant’s Ex. G.  Previous panels have found that using a disputed domain name to host hyperlinks to a complainant’s competitors constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the mark.  See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).  The Panel agrees and concludes that these domain names fail to show a Policy ¶ 4(c)(i) bona fide offering of goods or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.

 

First, Complainant argues that Respondent has registered this domain name in bad faith by way of over two dozen UDRP cases in 2012 in which Respondent was ordered to transfer its domain names to Complainant for engaging in bad faith.  The Panel notes that Complainant has provided a list of these decisions.  See, e.g., Rank Leisure Holdings Ltd. v. Fundacion Private Whois / PPA Media Servs, D2012–1842 (WIPO Dec. 6, 2012); Govt. Emps. Ins. Co. v. PPA Media Services, D2012–1486 (WIPO Sept. 18, 2012); Inter-Continental Hotels Corp. v. PPA Media Servs., Ryan G Foo / Fundaction Private Whois Domain Admin., D2012–1095 (WIPO July 12, 2012).  Previous panels have held that bad faith use and registration can be established when a respondent intends to prevent a complainant from embodying their mark in a domain name, and respondent has engaged in a pattern of such conduct in the past.  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).  As the Panel agrees that Respondent has a pattern of bad faith registration and use, it finds that Respondent has engaged in bad faith use and registration of the domain names under Policy ¶ 4(b)(ii).

 

Secondly, Complainant alleges that Respondent is offering third-party competing hyperlinks on the disputed domain names in an attempt to disrupt Complainant’s business.  The Panel again notes that of the domain names, the <rottentomates.com>, <timewernercable.com>, <timewarnmercable.com>, <timewarnrercable.com>, <timewarnrrcable.com>, <timewarningcable.com>, <timewarncable.com>, <timewarnercablwe.com>, <rtimewarnercable.com>, <timewarnercablew.com>, and <timewarnertcable.com> domain names are clearly evidenced as resolving to websites featuring hyperlinks to Complainant’s competitors.  See Complainant’s Ex. G.  Previous panels have held that it is evidence of bad faith use and registration to divert Internet users to a confusingly similar domain name’s website in order to disrupt a complainant’s business by displaying pay-per-click links to Complainant’s competitors. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).  As the Panel believes the same is true in this dispute, it finds bad faith under Policy ¶ 4(b)(iii).

 

Thirdly, Complainant further contends that Respondent’s display of competing hyperlinks on the disputed domain names also constitutes bad faith because of the likelihood that the content on the disputed domain names will confuse and mislead consumers. The <rottentomates.com>, <timewernercable.com>, <timewarnmercable.com>, <timewarnrercable.com>, <timewarnrrcable.com>, <timewarningcable.com>, <timewarncable.com>, <timewarnercablwe.com>, <rtimewarnercable.com>, <timewarnercablew.com>, and <timewarnertcable.com> domain names clearly illustrate the use of competing hyperlinks.  The Panel also agrees that the use of these confusingly similar domain names to attract advertising profits by confusing Internet users into affiliating the domain names with Complainant’s marks constitutes bad faith use and registration under Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

Fourthly, Complainant contends that Respondent had at least constructive knowledge of Complainant’s rights in its marks by virtue of federal trademark registrations that were in existence when Respondent registered the domain names.  Complainant further contends that given Complainant’s global reputation and the fact that the domain names correlate to the services Complainant provides under its marks, it is inconceivable that Respondent did not have actual knowledge of Complainant’s rights in its marks when registering the domain names.  Arguments of bad faith based on constructive notice are not generally accepted as being persuasive. The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the various trademarks of Complainant and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

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 <rottentomates.com>, <hannabarbera.org>, <timewernercable.com>, <timewarnmercable.com>, <timewarnrercable.com>, <timewarnrrcable.com>, <timewarnerondemand.net>, <timewarningcable.com>, <timewarncable.com>, <timewarnercablwe.com>, <rtimewarnercable.com>, <timewarnercablew.com>, and <timewarnertcable.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  February 1, 2013

 

 

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