Time Warner Cable Inc. v. michal restl c/o Dynadot Privacy
Claim Number: FA1302001484030
Complainant is Time Warner Cable Inc. (“Complainant”), represented by Kazuyo Morita of Holland & Hart LLP, Colorado, USA. Respondent is michal restl c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <timewarnercablesportsnet.com>, registered with DYNADOT, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 7, 2013; the National Arbitration Forum received payment February 7, 2013.
On February 7, 2013, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <timewarnercablesportsnet.com> domain name is registered with DYNADOT, LLC and that Respondent is the current registrant of the name. DYNADOT, LLC verified that Respondent is bound by the DYNADOT, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 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@timewarnercablesportsnet.com. Also on February 8, 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 March 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
Policy ¶4(a)(i): Complainant’s rights in the mark and the confusing similarity of the domain name.
Policy ¶4(a)(ii): Respondent lacks rights and legitimate interests.
Policy ¶4(a)(iii): Respondent’s bad faith use and registration.
Complainant has protected rights in the mark that Respondent used in a domain name.
The domain name is identical to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the mark contained within the disputed domain name.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant urges that it has rights in the TIME WARNER CABLE mark by way of USPTO trademark registration. See Reg. No. 3,972,845 registered June 7, 2011. The Panel agrees that Complainant’s USPTO registrations give rock-solid foundation to Complainant’s Policy ¶ 4(a)(i) rights in the TIME WARNER CABLE mark, especially since Respondent is a resident of the United States. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant asserts that Respondent’s domain name is identical to the TIME WARNER CABLE SPORTSNET mark and incorporates the TIME WARNER CABLE mark in its entirety. The Panel notes that although Complainant provides scant evidence of rights in the TIME WARNER CABLE mark, the domain name can be compared to the registered TIME WARNER CABLE mark. The Panel notes that Respondent added the term “sportsnet”—a term descriptive of the “Sportsnet” services offered by Complainant—and the generic top-level domain (“gTLD”) “.com.” The Panel agrees that neither the addition of a term descriptive of a Complainant’s business, nor the gTLD “.com” are relevant to analysis of confusing similarity, and the Panel finds that the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See 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); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is identical to the mark in which Complainant has protected rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 made such a showing here.
Complainant next argues that Respondent is not and has never been commonly known by the disputed <timewarnercablesportsnet.com> domain name. Complainant urges that it has not authorized Respondent to use Complainant’s mark in domain names or otherwise. The Panel notes that the WHOIS information lists “michal restl c/o Dynadot Privacy” as the registrant of the domain name. The Panel agrees, based on this lack of evidence, that Respondent simply is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further alleges that Respondent fails to provide a bona fide offering of goods or services on the disputed <timewarnercablesportsnet.com> domain name. Complainant claims that Respondent is overseeing the accumulation of click-through revenues to its accounts by using the disputed domain name to operate a series of hyperlink advertisements. The Panel notes that the disputed domain name resolves to a website dominated by hyperlinks to competing websites. See Complainant’s Ex. 6. The Panel agrees that the operation of a hyperlink farm for Respondent’s own acquisition of wealth is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent is a known cybersquatter with a history of warehousing famous trademarks owned by others. Complainant argues that a reverse WHOIS search on ‘Domain Tool’ shows that Respondent is the owner of some 1,200 domain names. Complainant notes that Respondent has been the loser of several UDRP decisions relating to domain names that involve third-party trademarks. See, e.g., Jessica London, Inc., a subsidiary of Redcats USA, Inc. v. Michal Restl, FA 1371109 (Nat. Arb. Forum Mar. 11, 2011); Allstate Ins. Co. v. Michal Restl, FA 1375161 (Nat. Arb. Forum April 8, 2011); State Farm Mut. Auto. Ins. Co. v. Michal Restl c/o Dynadot Privacy, FA 1380956 (Nat. Arb. Forum April 29, 2011). The Panel agrees that such a previous history of bad faith use and registration is evidence of Respondent’s Policy ¶ 4(b)(ii) bad faith in this proceeding. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant also argues that Respondent is disrupting Complainant’s business in bad faith by confusing Internet users into believing Respondent is associated with and/or sponsored by Complainant. Complainant believes that Respondent’s click-through advertisements divert consumers away from Complainant to other competing and third-party websites. The Panel again notes that the disputed domain name’s resolving website is dedicated to the solicitation of hyperlinks to third-party competing websites. See Complainant’s Ex. 6. The Panel agrees that Respondent has engaged in Policy ¶ 4(b)(iv) bad faith because Internet users are likely to confuse Complainant as the source of, or co-sponsor for, the content viewable on the disputed domain name. See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Complainant finally contends that Respondent had actual knowledge of Complainant’s rights in the mark. Complainant believes that this is shown dispositively by the fact that Respondent has embodied the entire mark into a domain name that is dedicated to the redirection of Internet users to Complainant’s competitors. The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and finds that Respondent registered and used the <timewarnercablesportsnet.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <timewarnercablesportsnet.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 25, 2013.
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