Home Box Office, Inc. v. HBO Films Asia Ltd / HBO Films Asia
Claim Number: FA1212001476062
Complainant is Home Box Office, Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is HBO Films Asia Ltd / HBO Films Asia (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hbofilmsasia.com> registered with Click Registrar, Inc. D/B/A Publicdomainregistry.Com, and <hbofilms.com>, registered with Enom, Inc.
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.
Daniel B. Banks, Jr., as Panelist.
Panel Note: Prehearing Transfer of <hbofilms.com> domain name
The Panel was informed by both Complainant and Respondent that the <hbofilms.com> domain name has been transferred to Complainant. As such, the remainder of the Panel’s decision will only deal with the <hbofilmsasia.com> domain name.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2012; the National Arbitration Forum received payment on December 14, 2012.
On December 17, 2012, Dec 20, 2012, Click Registrar, Inc. D/B/A Publicdomainregistry.Com, confirmed by e-mail to the National Arbitration Forum that the <hbofilmsasia.com> domain name is registered with Click Registrar, Inc. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the name. Click Registrar, Inc. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Click Registrar, Inc. D/B/A Publicdomainregistry.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 December 17, 2012, Dec 20, 2012, Registrar Enom, Inc., confirmed by e-mail to the National Arbitration Forum that the <hbofilmsasia.com> domain name is registered with Enom, Inc., 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 December 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 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@hbofilmsasia.com, postmaster@hbofilms.com. Also on December 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.
The parties filed a Joint Request to Stay the Administrative Proceeding on January 15, 2013. The order was granted on January 15, 2013 setting a new due date for the Response of February 28, 2013.
Complainant filed a Request to Remove the Stay of Administrative Proceeding on January 17, 2013. The order was granted on January 17, 2013 resetting the due date for the Response of January 22, 2013. Further, the Forum was informed that Complainant had settled the matter regarding the <hbofilms.com> domain name with Respondent, and that this domain name was no longer in dispute.
A timely Response was received and determined to be complete on January 22, 2013.
On January 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks,Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the HBO mark in its business, which stands for the name “Home Box Office, Inc.” Complainant owns trademark registrations for the HBO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,020,101 registered September 9, 1975). See Complainant’s Exhibit B. Complainant also owns common law rights in the HBO mark in countries throughout the world, including in China, Hong Kong, Japan, and Taiwan. Complainant uses the HBO mark in its business offering premium television programming services. HBO Films is a division of Complainant’s company, and produces movies that span from low-budget independent films to big-event movies. Complainant has established a standard for exceptional films and has been recognized for its quality by the numerous awards it receives and has a reputation for creating “provocative, entertaining, and often controversial films.” HBO is sold in over 150 countries, including in many Asian countries. HBO Asia began in 1992, and offers five 24-hour commercial-free multiplex channels.
Respondent registered the <hbofilmsasia.com> domain name, which is confusingly similar to Complainant’s HBO marks. Respondent registered the domain name in order to capitalize on the goodwill associated with Complainant’s HBO mark, and Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known as “HBO” or by the domain name. Respondents registration and use of the disputed domain name was in bad faith.
B. Respondent
Respondent HBO Films Asia Ltd. did not submit a Response.
1 - The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
2 -- Respondent has no rights or legitimate interests in respect of the domain name.
3 - The domain name has been registered and is being used in bad faith.
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.
Complainant asserts that it owns rights in the HBO mark through its USPTO trademark registration (e.g., Reg. No. 1,020,101 registered September 9, 1975). The Panel concludes that Complainant has satisfactorily demonstrated rights in its mark under Policy ¶ 4(a)(i) due to its USPTO registration. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). The Panel also concludes that Respondent is not required to hold a trademark registration for its mark in the Respondent’s country of residence in order to establish rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <hbofilmsasia.com> domain name is confusingly similar to its HBO mark. Complainant contends that the disputed domain name’s inclusion of the descriptive term “film” and the geographic term “asia,” creates the false impression that Respondent is affiliated or related to Complainant’s business, as Complainant’s programming and films are distributed in Asia. The Panel notes that the <hbofilmsasia.com> domain name includes the generic top-level domain (“gTLD”) “.com,” and determines that due to the inclusion of Complainant’s entire HBO mark, as well as a descriptive and a generic term and a gTLD, the <hbofilmsasia.com> domain name is confusingly similar to Complainant’s HBO mark under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part); see also 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).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then 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 licensed or authorized to use the HBO mark and is not named or commonly known as “HBO.” The Panel notes that the registrant for the <hbofilmsasia.com> domain name is listed in the WHOIS information as “HBO Films Asia Ltd.,” and determines that, while it appears that Respondent is commonly known by the disputed domain name, no other evidence supports such an assertion The Panel concludes that Respondent is not commonly known by the <hbofilmsasia.com> domain name pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Complainant makes the argument in its Policy ¶ 4(a)(iii) section that Respondent uses the <hbofilmsasia.com> domain name to operate a commercial website and market materials generated by Respondent. Complainant claims that Respondent uses Complainant’s distinctive HBO logo and impersonates Complainant’s website by alleging “HBO Films Asia is the direct brainchild of President Director and Founder Len Amato,” as well as uses Complainant’s e-mail address in the website to solicit money from consumers who believe Respondent is affiliated by Complainant’s company. Complainant further alleges that Respondent has induced consumers into entering into business relationships with Respondent and paying Respondent money as a result of its use of the disputed domain name. The panel in Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), stated that the respondent’s attempt to pass itself off as the complainant was unauthorized and demonstrated that the respondent had no rights or legitimate interests in the disputed domain name. In HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004), the panel stated that the respondent used the domain name outside the parameters of Policy ¶¶ 4(c)(i) and 4(c)(iii) by using the resolving website to imitate the complainant’s website and acquire personal information from the complainant’s potential customers. The Panel determines that Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) as a result of its use of the <hbofilmsasia.com> domain name to pass itself off as Complainant at the resolving website and to phish for information from Complainant’s potential clients.
Complainant claims that Respondent’s impersonation of Complainant’s website has led some of Complainant’s customers to pay money to Respondent or be solicited to enter into business relationships with Respondent. The Panel determines that by using the <hbofilmsasia.com> domain name to induce Complainant’s customers to create business relationships, Respondent disrupts Complainant’s business and thus registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant argues that Respondent demonstrates bad faith registration and use by using the <hbofilmsasia.com> domain name to copy Complainant’s website by using its HBO logo and mentioning Complainant’s e-mail address throughout the website. Complainant alleges that Respondent claims that its business is the result of a “first ever collaboration” between Complainant and partnering businesses throughout Asia, and consumers have reported to Complainant that they have unintentionally entered into monetary transactions with Respondent while under the impression that the disputed domain name was affiliated with Complainant. The Panel determines that Respondent’s use of the <hbofilmsasia.com> domain name to attempt to pass itself off as Complainant and make a profit by using a confusingly similar domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant alleges that Respondent uses the disputed domain name to cause some of Complainant’s clients to believe there is a connection between Complainant and the disputed domain name and unintentionally enter into a business relationship with Respondent, including paying Respondent money. The Panel finds that Respondent’s attempt to “phish” personal information from Complainant’s clients amounts to bad faith registration and use under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use).
Complainant contends that its federal trademark registrations provide constructive knowledge of Complainant’s rights in the HBO mark, and further that the reputation of Complainant’s mark attest to Respondent’s actual knowledge of the mark at the time the <hbofilmsasia.com> domain name was registered. The Panel finds that constructive knowledge is not sufficient to demonstrate Respondent registered the disputed domain name in bad faith. See The 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."). The Panel finds, however, that because Respondent uses Complainant’s logo at the resolving website, and otherwise demonstrates a familiarity with Complainant’s HBO mark, Respondent had actual knowledge of the mark and therefore registered the disputed domain name in bad faith pursuant to 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hbofilmsasia.com> and domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: February 10, 2013
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