Time Warner Inc. v. ICS INC.
Claim Number: FA1308001513884
Complainant is Time Warner Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <twcsportnet.com>, registered with ENOM, INC.
The domain name at issue is <switchtotimewarner.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2013; the National Arbitration Forum received payment on August 8, 2013.
On August 9, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <twcsportnet.com> domain name is registered with ENOM, INC. and 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 August 9, 2013, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <switchtotimewarner.com> domain name is registered with PDR LTD. d/b/aPUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. 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 August 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@twcsportnet.com and postmaster@switchtotimewarner.com. Also on August 9, 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 September 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <twcsport.net> and <switchtotimewarner.com> domain names, the domain names at issue, are confusingly similar to Complainant’s TIME WARNER mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain namesat issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Time Warner Inc., is a leading media and entertainment company, whose businesses include interactive services, filmed entertainment, animation, television networks, and publishing. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TIME WARNER mark (e.g., Reg. No. 1,816,474, registered January 11, 1994); and for the TWC mark (Reg. No. 4,072,265, registered October 10, 1995). The disputed domains are nearly identical and confusingly similar to the TIME WARNER marks.
Respondent is not named or commonly known as any of the TIME WARNER marks. Respondent has used, and continues to use, the disputed domains with commercial websites that include inks to third-party sites that, in many cases, provide services that compete with Complainant’s. Respondent’s bad faith is also demonstrated by its offer to sell the domain names. Respondent has been ordered to transfer infringing domain names in numerous other UDRP proceedings. Respondent has used, and continues to use, the disputed domains with commercial websites that include links to third-party sites that, in many cases, provide services that compete with Complainant’s. Respondent is deemed to at least have had constructive knowledge of Complainant’s rights in its TIME WARNER marks by virtue of the federal trademark registrations that were in existence when Respondent registered the disputed domains. It is inconceivable that Respondent did not have actual knowledge of Complainant when the disputed domains were registered. Respondent registered the <twcsportnet.com> domain name on December 31, 2012; Respondent registered the <switchtotimewarner.com> domain name on January 14, 2012.
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.”).
Complainant is a leading media and entertainment company, whose businesses include interactive services, filmed entertainment, animation, television networks, and publishing. Complainant 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 TWC mark (Reg. No. 4,072,265, registered October 10, 1995). Although Respondent appears to reside in the Cayman Islands, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as it can demonstrate rights in the mark in some jurisdiction. 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). The Panel holds that Complainant’s registration of the TIME WARNER and TWC marks with the USPTO sufficiently establish 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)).
The <twcsportnet.com> domain name is nearly identical and confusingly similar to Complainant’s TWC mark. Respondent incorporates Complainant’s TWC mark in its entirety and adds the generic phrase “sportnet.” This addition of a generic phrase to Complainant’s mark does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). The Panel also notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The inclusion of a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel finds that Respondent’s <twcsportnet.com> domain name is confusingly similar to Complainant’s TWC mark under Policy ¶ 4(a)(i).
The <switchtotimewarner.com> domain name is nearly identical and confusingly similar to Complainant’s TIME WARNER mark. Respondent merely adds the generic phrase “switchto” to Complainant’s TIME WARNER mark. The inclusion of a generic phrase does not distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel also notes that Respondent removes the space in Complainant’s TIME WARNER mark and adds the gTLD “.com.” Respondent’s omission of spaces and inclusion of a gTLD are 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)). Thus, the Panel finds that Respondent’s <switchtotimewarner.com> domain name is confusingly similar to Complainant’s TIME WARNER mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not named or commonly known as any of the TIME WARNER marks, and Respondent is not licensed or authorized to use Complainant’s TIME WARNER or TWC marks. The WHOIS information identifies “ICS INC” as the domain name registrant. A respondent is not commonly known by the disputed domain name where it is not known by the domain name in the WHOIS information and where respondent fails to include additional evidence showing that it is known by the disputed domain name. 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). Accordingly, the Panel finds that Respondent is not commonly known by the <switchtotimewarner.com> domain name pursuant to a Policy ¶ 4(c)(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, provide services that compete with those that Complainant offers under the TIME WARNER and TWC brands. Respondent’s <twcsportnet.com> and <switchtotimewarner.com> domain names resolve to hyperlink directory webpages, featuring links title “Switch to Time Warner,” “Comcast Cable Service,” “TWC,” and others. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel concluded that “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).” Therefore, because Respondent’s <twcsportnet.com> and <switchtotimewarner.com> domain names resolve to competing hyperlink directories, the Panel finds that Respondent is not using the domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s bad faith is demonstrated by its offer to sell the domain names. Respondent’s infringing websites state “The domain <twcsportnet.com> (<switchtotimewarner.com>) is for sale!” This general offer to sell the disputed domain names evidences bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent has engaged in a substantial pattern of cybersquatting and has been ordered to transfer infringing domain names in numerous other UDRP proceedings. Assurant, Inc. v. ICS INC., FA 1470246 (Nat. Arb. Forum Dec. 17, 2012); Webster Financial Corporation and Webster Bank, National Association v. ICS INC. / Whois Privacy Protection Service, Inc., / Whois Agent, FA 1472286 (Nat. Arb. Forum Feb. 17, 2013); Assurant, Inc. v. ICS INC., FA 1472672 (Nat. Arb. Forum Jan. 6, 2013). Accordingly, Respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer demonstrate a pattern of bad faith use and registration under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Respondent is using the <twcsportnet.com> and <switchtotimewarner.com> domain names in connection with commercial websites that include links to third-party sites that, in many cases, provide services that compete with Complainant’s offerings. The disputed domain names resolve to websites featuring competing hyperlinks titled “Switch to Time Warner,” “Prepaid Visa Gift Card,” and others. This use of the domain names to provide competing links disrupts Complainant’s legitimate business, proving bad faith use and registration under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
As noted, Respondent is using the <twcsportnet.com> and <switchtotimewarner.com> domain names in connection with commercial websites that include links to third-party sites that, in many cases, provide services that compete with Complainant’s. The disputed domain names link to hyperlink directories, featuring competing hyperlinks such as “Switch to Time Warner,” “Prepaid Visa Gift Card,” and others. This commercial use of the domain names is likely to confuse and mislead consumers and violates Policy ¶ 4(b)(iv). The Panel, therefore, holds that Respondent is using the <twcsportnet.com> and <switchtotimewarner.com> domain names to attract consumers to its own website for commercial gain, demonstrating bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Respondent is deemed to at least have had constructive knowledge of Complainant’s rights in its TIME WARNER marks by virtue of the federal trademark registrations that were in existence when Respondent registered the disputed domains. Additionally, it is inconceivable that Respondent did not have actual knowledge of Complainant when the disputed domains were registered, given Complainant’s global reputation and the fact that the disputed domains correlate to Complainant and its services. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, this Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <twcsportnet.com> and <switchtotimewarner.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 8, 2013
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