Time Warner Inc. v. Above.com Domain Privacy / Host Master
Claim Number: FA1311001531329
Complainant is Time Warner Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is Above.com Domain Privacy / Host Master (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cinemaxx.org>, <thetimewarnercable.com>, <timewarnercinci.com>, <timewarnerclable.com>, <timewarnercablemaine.com>, <timewarnerwny.com>, <timewarnerme.com>, <timewarneraccount.com>, <timewarnercablecarolinas.com>, <timewarndercable.com>, <timewarneroceaniccable.com>, <timewarnercabler.com>, <timewarnercarble.com>, and <timewarnercableneo.com>, registered with Above.Com Pty Ltd.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2013; the National Arbitration Forum received payment on November 22, 2013.
On November 26, 2013, Above.Com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <cinemaxx.org>, <thetimewarnercable.com>, <timewarnercinci.com>, <timewarnerclable.com>, <timewarnercablemaine.com>, <timewarnerwny.com>, <timewarnerme.com>, <timewarneraccount.com>, <timewarnercablecarolinas.com>, <timewarndercable.com>, <timewarneroceaniccable.com>, <timewarnercabler.com>, <timewarnercarble.com>, and <timewarnercableneo.com> domain names are registered with Above.Com Pty Ltd and that Respondent is the current registrant of the names. Above.Com Pty Ltd has verified that Respondent is bound by the Above.Com Pty Ltd 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 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@cinemaxx.org, postmaster@thetimewarnercable.com, postmaster@timewarnercinci.com, postmaster@timewarnerclable.com, postmaster@timewarnercablemaine.com, postmaster@timewarnerwny.com, postmaster@timewarnerme.com, postmaster@timewarneraccount.com, postmaster@timewarnercablecarolinas.com, postmaster@timewarndercable.com, postmaster@timewarneroceaniccable.com, postmaster@timewarnercabler.com, postmaster@timewarnercarble.com, and postmaster@timewarnercableneo.com. Also on December 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 December 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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
i. Respondent is not commonly known by the TIME WARNER marks.
ii. Respondent has used, and continues to use, the disputed domain names with commercial websites that include links to third-party sites that, in many cases, promote services that compete with Complainant and its licensee.
i. Respondent has been ordered to transfer infringing domain names in dozens, if not more than 100, other UDRP disputes.
ii. Respondent has used, and continues to use, the disputed domain names with commercial websites that include links to third-party sites that, in many cases, promote services that compete with Complainant and its licensee.
iii. Respondent is deemed to at least have had constructive knowledge of Complainant’s rights in its TIME WARNER marks. It is inconceivable that Respondent did not have actual knowledge of Complainant when the disputed domain names were registered.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the following:
i. <cinemaxx.org> domain name on February 7, 2008;
ii. <thetimewarnercable.com> domain name on March 28, 2007;
iii. <timewarnercinci.com> domain name on March 31, 2009;
iv. <timewarnerclable.com> domain name on April 26, 2007;
v. <timewarnercablemaine.com> domain name on March 30, 2009;
vi. <timewarnerwny.com> domain name on July 18, 2007;
vii. <timewarnerme.com> domain name on March 30, 2009;
viii. <timewarneraccount.com> domain name on March 31, 2009;
ix. <timewarnercablecarolinas.com> domain name on March 29, 2009;
x. <timewarndercable.com> domain name on February 13, 2008;
xi. <timewarneroceaniccable.com> domain name on April 2, 2007;
xii. <timewarnercabler.com> domain name on October 26, 2007;
xiii. <timewarnercarble.com> domain name on September 22, 2007;
xiv. <timewarnercableneo.com> domain name on March 31, 2009.
Complainant established that it had rights in the marks contained in the disputed domain names.
Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected marks.
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 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 contends that it is a leading media and entertainment company, whose businesses include interactive services, filmed entertainment, animation, television networks, and publishing. Complainant argues that it is the owner of trademark registrations with the USPTO for the CINEMAX mark (Reg. No. 1,349,993, registered July 16, 1985); 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. 3,972,845, registered June 7, 2011). See Complainant’s Annex B. The Panel notes that Respondent appears to reside and operate in Australia. However, the Panel finds that Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent operates, so long as Complainant registers 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). Accordingly, the Panel finds that Complainant’s registration of the CINEMAX, TIME WARNER, and TIME WARNER CABLE marks with the USPTO sufficiently establishes its rights in the mark 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 Panel notes that Respondent’s <cinemaxx.org> domain name is confusingly similar to Complainant’s CINEMAX mark. The Panel observes that Respondent adds an additional letter “x” and the generic top-level domain (“gTLD”) “.org” to Complainant’s mark in the disputed domain name. The Panel finds that Respondent’s inclusion of an additional letter does not distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). The Panel also finds that Respondent’s addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Therefore, the Panel determines that Respondent’s <cinemaxx.org> domain name is confusingly similar to Complainant’s CINEMAX mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <timewarnerwny.com>, <timewarnerme.com>, and <timewarneraccount.com> domain names are confusingly similar to its TIME WARNER mark. The Panel observes that Respondent uses Complainant’s TIME WARNER mark in its entirety and adds the letters “wny” to its <timewarnerwny.com> domain name. The Panel finds that Respondent’s inclusion of additional letters to Complainant’s mark is irrelevant to Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). The Panel notes that Respondent adds the generic term “me” or “account” to Complainant’s TIME WARNER mark in its <timewarnerme.com> and <timewarneraccount.com> domain names. The Panel holds that Respondent’s addition of generic terms does not distinguish Respondent’s 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)). Lastly, the Panel observes that Respondent removed the space in Complainant’s TIME WARNER mark and added gTLDs to the disputed domain names. The Panel determines that Respondent’s omission of spaces and inclusion of gTLDs is irrelevant to a Policy ¶ 4(a)(i) determination. 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 holds that Respondent’s <timewarnerwny.com>, <timewarnerme.com>, and <timewarneraccount.com> domain names are confusingly similar to Complainant’s TIME WARNER mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <thetimewarnercable.com>, <timewarnerclable.com>, <timewarnercablemaine.com>, <timewarnercablecarolinas.com>, <timewarndercable.com>, <timewarneroceaniccable.com>, <timewarnercabler.com>, <timewarnercarble.com>, and <timewarnercableneo.com> domain names are confusingly similar to Complainant’s TIME WARNER CABLE mark. The Panel notes that Respondent added the generic term “the,” “maine,” “carolinas,” “oceanic,” or “neo” to Complainant’s mark in the <thetimewarnercable.com>, <timewarnercablemaine.com>, <timewarnercablecarolinas.com>, <timewarneroceaniccable.com>, and <timewarnercableneo.com> domain names. The Panel determines that Respondent’s addition of generic terms is inconsequential to a Policy ¶ 4(a)(i) analysis. 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 notes that Respondent adds additional letters to Complainant’s TIME WARNER CABLE mark in its <timewarnerclable.com>, <timewarndercable.com>, <timewarnercabler.com>, and <timewarnercarble.com> domain names. The Panel finds that Respondent’s inclusion of additional letters does not differentiate the disputed domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). Finally, the Panel observes that Respondent omits the spaces in Complainant’s TIME WARNER CABLE mark and adds the gTLD “.com” to each of the domain names. The Panel finds that Respondent’s elimination of spaces and inclusion of gTLDs is irrelevant to Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel concludes that Respondent’s <thetimewarnercable.com>, <timewarnerclable.com>, <timewarnercablemaine.com>, <timewarnercablecarolinas.com>, <timewarndercable.com>, <timewarneroceaniccable.com>, <timewarnercabler.com>, <timewarnercarble.com>, and <timewarnercableneo.com> domain names are confusingly similar to Complainant’s TIME WARNER CABLE mark under Policy ¶ 4(a)(i).
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.”).
Complainant alleges that Respondent is not commonly known by the CINEMAX, TIME WARNER, or TIME WARNER CABLE marks. Complainant asserts that Respondent is not licensed or authorized to use the TIME WARNER marks. The Panel observes that the WHOIS information identifies “Above.com Domain Privacy / Host Master” as the registrant of the <cinemaxx.org>, <thetimewarnercable.com>, <timewarnercinci.com>, <timewarnerclable.com>, <timewarnercablemaine.com>, <timewarnerwny.com>, <timewarnerme.com>, <timewarneraccount.com>, <timewarnercablecarolinas.com>, <timewarndercable.com>, <timewarneroceaniccable.com>, <timewarnercabler.com>, <timewarnercarble.com>, and <timewarnercableneo.com> domain names. See Complainant’s Annex E. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that 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 respondent was commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent has used, and continues to use, the <cinemaxx.org>, <thetimewarnercable.com>, <timewarnercinci.com>, <timewarnerclable.com>, <timewarnercablemaine.com>, <timewarnerwny.com>, <timewarnerme.com>, <timewarneraccount.com>, <timewarnercablecarolinas.com>, <timewarndercable.com>, <timewarneroceaniccable.com>, <timewarnercabler.com>, <timewarnercarble.com>, and <timewarnercableneo.com> domain names with commercial websites that include links to third-party sites that, in many cases, promote services that compete with Complainant and its licensee. The Panel notes that Respondent’s disputed domain names resolve to competing-hyperlink directories with links titled “Time Warner Cable,” “Time Warner Cable Deals,” “Pay Cable Bill,” and others. See Complainant’s Annex G. Prior panels have determined that a respondent’s use of a disputed domain name to provide competing links is not a bona fide offering of goods or services or a 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).”). Therefore, the Panel concludes that Respondent is not using the <thetimewarnercable.com>, <timewarnercinci.com>, <timewarnerclable.com>, <timewarnerwny.com>, <timewarnerme.com>, <timewarneraccount.com>, <timewarnercablecarolinas.com>, <timewarndercable.com>, <timewarneroceaniccable.com>, <timewarnercabler.com>, <timewarnercarble.com>, and <timewarnercableneo.com> 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 agrees that the <cinemaxx.org> and <timewarnercablemaine.com> domain names however appear to resolve to a <zeroredirect1.com> website which was blocked by the Trend Micro anti-virus software. See Compl., at Attached Exs. G. The Panel agrees that in the absence of any other evidence as to the use of these domain names, the suspicions raised by the blocking the website’s conduct weighs against the finding of either a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See, e.g., Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Complainant asserts that Respondent has been ordered to transfer infringing domain names in dozens, if not more than 100, other UDRP disputes. See Complainant’s Annex F: Vanguard Trademark Holdings USA LLC v. Above.com Domain Privacy, FA 1333300 (Nat. Arb. Forum Aug. 4, 2010); W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010); U.S. Smokeless Tobacco Manufacturing Company LLC v. Above.com Domain Privacy, FA 1336145 (Nat. Arb. Forum Aug. 30, 2010). As the Panel finds that Respondent’s prior UDRP proceedings are sufficient evidence of a pattern of bad faith , the Panel holds that Respondent has registered and is using the <cinemaxx.org>, <thetimewarnercable.com>, <timewarnercinci.com>, <timewarnerclable.com>, <timewarnercablemaine.com>, <timewarnerwny.com>, <timewarnerme.com>, <timewarneraccount.com>, <timewarnercablecarolinas.com>, <timewarndercable.com>, <timewarneroceaniccable.com>, <timewarnercabler.com>, <timewarnercarble.com>, and <timewarnercableneo.com> domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant claims that Respondent has used, and continues to use, the disputed domain names with commercial websites that include links to third-party sites that, in many cases, promote services that compete with Complainant and its licensee. The Panel notes that Respondent’s disputed domain names links to web pages containing competing hyperlinks with links titled “Time Warner Cable TV Lineup,” “Dish TV Packages,” “Pay Cable Bill,” and more. See Complainant’s Annex G. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel determined that “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).” Thus, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith according to Policy ¶ 4(b)(iv).
The Panel agrees that the <cinemaxx.org> and <timewarnercablemaine.com> domain names however appear to resolve to a <zeroredirect1.com> website which was blocked by the Trend Micro anti-virus software. See Compl., at Attached Exs. G. the Panel agrees that Complainant has shown evidence of bad faith when the anti-virus software actively prevents Complainant from viewing the apparently high-risk materials viewable through the domain names’ websites. See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”). As the Panel agrees, it imputes Policy ¶ 4(a)(iii) bad faith upon Respondent in regards to the <cinemaxx.org> and <timewarnercablemaine.com> domain names.
Complainant contends that Respondent is deemed to at least have had constructive knowledge of Complainant’s rights in its CINEMAX, TIME WARNER, and TIME WARNER CABLE marks by virtue of the federal trademark registrations that were in existence when Respondent registered the disputed domain names. Complainant also argues that it is inconceivable that Respondent did not have actual knowledge of Complainant when the disputed domain names were registered, based on Complainant’s global reputation and the fact that the disputed domain names correlate to Complainant and its services. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the 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 holds that Respondent registered the disputed domain names 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cinemaxx.org>, <thetimewarnercable.com>, <timewarnercinci.com>, <timewarnerclable.com>, <timewarnercablemaine.com>, <timewarnerwny.com>, <timewarnerme.com>, <timewarneraccount.com>, <timewarnercablecarolinas.com>, <timewarndercable.com>, <timewarneroceaniccable.com>, <timewarnercabler.com>, <timewarnercarble.com>, and <timewarnercableneo.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: January 7, 2014
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