Time Warner Inc. v. michal restl c/o Dynadot Privacy
Claim Number: FA1305001497719
Complainant is Time Warner Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is michal restl c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <timwwarnercable.com>, <timewarnercablemyservices.com>, <timewarnercablespeedtest.com>, <timewarnermyservices.com>, and <timewarnerspeedtest.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 May 2, 2013; the National Arbitration Forum received payment May 2, 2013.
On May 2, 2013, DYNADOT, LLC confirmed by e-mail to the National Arbitration Forum that the <timwwarnercable.com>, <timewarnercablemyservices.com>, <timewarnercablespeedtest.com>, <timewarnermyservices.com>, and <timewarnerspeedtest.com> domain names are registered with DYNADOT, LLC and that Respondent is the current registrant of the names. 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 May 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@timwwarnercable.com, postmaster@timewarnercablemyservices.com, postmaster@timewarnercablespeedtest.com, postmaster@timewarnermyservices.com, and postmaster@timewarnerspeedtest.com. Also on May 3, 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 June 3, 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 names be transferred from Respondent to Complainant.
i. Respondent is not named or commonly known as the TIME WARNER marks.
ii. Respondent is using the disputed domains with commercial web sites that promote many of Complainant’s competitors’ services.
i. Respondent has been ordered to transfer infringing domain names in several other UDRP disputes.
ii. Respondent has used, and continues to use, the disputed domains with commercial websites that include links to third-party sites that, in many cases, promote services that compete with Complainant’s licensee.
iii. Based upon the fame of the TIME WARNER marks, Complainant’s federal trademark registrations, Respondent’s use of the disputed domains with commercial websites that promote Complainant and its competitors, and Respondent’s significant pattern of cybersquatting, Respondent cannot in good faith claim that he had no knowledge of Complainant’s rights in its famous TIME WARNER marks.
Complainant established that it has protected rights in the family of marks contained within the disputed domain names.
The disputed domain names are confusingly similar to Complainant’s protected marks.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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, Time Warner Inc., claims that it is a leading media and entertainment company, whose businesses include interactive services, filmed establishment, animation, television networks, and publishing. Complainant contends that it is the owner of trademark registrations with the USPTO for the TIME WARNER mark (e.g., Reg. No. 1,816,474, registered January 11, 1994), and for the TIME WARNER CABLE mark (e.g., Reg. No. 2,775,146, registered October 21, 2003). See Annex B. The Panel finds that Complainant’s registration of the TIME WARNER and TIME WARNER CABLE marks with the USPTO sufficiently establishes its rights in the marks pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant alleges that the <timewarnermyservices.com> and <timewarnerspeedtest.com> domain names are confusingly similar to its TIME WARNER mark, due to the addition of descriptive terms to its TIME WARNER mark. Complainant asserts that the <timewarnermyservices.com> domain name attaches the terms “my” and services” to the TIME WARNER mark, and the <timewarnerspeedtest.com> domain name attaches the terms “speed,” and “test” to the mark. The Panel also notes that the disputed domain names remove the space between the TIME WARNER mark, and include the generic top-level domain (“gTLD”) “.com.” As a result of the characteristics of the <timewarnermyservices.com> and <timewarnerspeedtest.com> domain names, the Panel finds that the domain names are confusingly similar to Complainant’s TIME WARNER mark pursuant to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also 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)).
Complainant argues that the disputed domain names are nearly identical to and confusingly similar to the TIME WARNER marks because each of the domain names is a common misspelling of the TIME WARNER marks or merely adds descriptive terms to the TIME WARNER marks. The Panel notes that Respondent’s <timwwarnercable.com> domain name substitutes the letter “e” in Complainant’s TIME WARNER CABLE mark with the letter “w.” The Panel finds that Respondent’s substitution of letters in Complainant’s mark does not distinguish Respondent’s domain name from Complainant’s 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”). Complainant contends that Respondent’s <timewarnercablemyservices.com> and <timewarnercablespeedtest.com> domain names include Complainant’s TIME WARNER CABLE mark and add generic and descriptive terms—the terms “my” and “services” to the <timewarnercablemyservices.com> domain name, and the terms “speed” and “test” to the <timewarnercablespeedtest.com> domain name. The Panel finds that Respondent’s addition of generic or descriptive terms to its domain names does not differentiate the domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel notes as well that Respondent eliminates the spaces in Complainant’s marks and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the removal of spaces and addition of gTLDs is irrelevant to a Policy ¶ 4(a)(i) analysis. 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)). Therefore, the Panel finds that Respondent’s <timwwarnercable.com>, <timewarnercablemyservices.com>, and <timewarnercablespeedtest.com> domain names are confusingly similar to Complainant’s TIME WARNER CABLE and TIME WARNER marks pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to and 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 shifts to Respondent to show that 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 asserts that Respondent is not named or commonly known as the TIME WARNER marks. The Panel notes as well that the WHOIS information identifies “michal restl c/o Dynadot Privacy” as the registrant of the disputed domain name. See Annex E. The Panel also notes that Respondent does not provide evidence that it is known by the domain names. Thus, the Panel findsd that Respondent is not commonly known by the disputed domain names for the purposes of Policy ¶ 4(c)(ii). 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).
Complainant argues that Respondent is using the disputed domains with commercial web sites that promote many of Complainant’s competitors’ services. The Panel notes as well that Complainant provides evidence showing that Respondent’s disputed domain name resolves to a hyperlink directory providing links to entities that Complainant claims are its competitors, including “NEW YAHOO! MESSENGER,” “Download Speed Test,” “Rabbit TV – Internet Cable,” and others. See Annex G. Accordingly, the Panel holds that Respondent’s use of the disputed domain names to provide competing hyperlinks does not constitute 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 names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent has been ordered to transfer infringing domain names in several other UDRP disputes. Complainant asserts that Respondent’s bad faith intent is further demonstrated by its substantial pattern of cybersquatting. See Jessica London, Inc. v. Restl, FA 1371109 (Nat. Arb. Forum Mar. 11, 2011); see also Time Warner Cable Inc. v. Restl, FA1484030 (Nat. Arb. Forum Mar. 25, 2013). Thus, the Panel finds that Respondent’s pattern of bad faith registration evidences bad faith use and registration of the disputed domain names and shows bad faith under Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Nat. Arb. Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”).
Complainant claims that Respondent has used, and continues to use, the disputed domains with commercial websites that include links to third-party sites that, in many cases, promote services that compete with Complainant’s licensee. The Panel notes that Complainant provides evidence of a screen shot showing that Respondent’s disputed domain name resolves to a hyperlink directory providing links to Complainant’s competitors titled “Verizon Official Site,” “Download Speed Test,” “DIECTV Official Site,” and others. See Annex G. The Panel finds that Respondent’s use of the domain names is likely to confuse and mislead consumers, showing 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).
Complainant alleges that based upon the fame of the TIME WARNER marks, Complainant’s federal trademark registrations, Respondent’s use of the disputed domains with commercial websites that promote Complainant and its competitors, and Respondent’s significant pattern of cybersquatting, Respondent cannot in good faith claim that he had no knowledge of Complainant’s rights in its famous TIME WARNER marks. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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."); see also 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names 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 <timwwarnercable.com>, <timewarnercablemyservices.com>, <timewarnercablespeedtest.com>, <timewarnermyservices.com>, and <timewarnerspeedtest.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 14, 2013.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page