Time Warner Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1312001535782
Complainant is Time Warner Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington, D.C., USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <timewarnarcables.com>, <timewarnercabe.com>, <timewarncablle.com>, <timewarnercablekansascity.com>, and <timewarnerdesertcities.com>, registered with Internet.Bs Corp.
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 December 22, 2013; the National Arbitration Forum received payment on December 22, 2013.
On December 29, 2013, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <timewarnarcables.com>, <timewarnercabe.com>, <timewarncablle.com>, <timewarnercablekansascity.com>, and <timewarnerdesertcities.com> domain names are registered with Internet.Bs Corp. and that Respondent is the current registrant of the names. Internet.Bs Corp. has verified that Respondent is bound by the Internet.Bs Corp. 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 January 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2014 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@timewarnarcables.com, postmaster@timewarnercabe.com, postmaster@timewarncablle.com, postmaster@timewarnercablekansascity.com, and postmaster@timewarnerdesertcities.com. Also on January 2, 2014, 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 January 24, 2014, 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 domain names, The <timewarnarcables.com>, <timewarnercabe.com>, <timewarncablle.com>, <timewarnercablekansascity.com>, and <timewarnerdesertcities.com>, 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 names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TIME WARNER mark for which it uses cable television broadcasting services, telecommunications and a variety of related services on the Internet. Complainant is the owner of multiple registrations with the United States Patent and Trademark Office (“USPTO”) for the TIME WARNER mark (e.g., Reg. No. 1,816,474 registered Jan. 11, 1994). The <timewarnarcables.com>, <timewarnercabe.com>, <timewarncablle.com>, <timewarnercablekansascity.com>, and <timewarnerdesertcities.com> domain names are confusingly similar to the TIME WARNER mark.
Respondent is not commonly known by the disputed domain names and is not licensed or authorized to use the TIME WARNER mark. Respondent uses the disputed domain to host commercial links to third-party websites that sell services that compete with Complainant. Respondent has already lost a UDRP dispute in 2013 to Complainant. Respondent demonstrates bad faith under Policy ¶ 4(b)(iii) by diverting Internet users to its website that ultimately redirects Internet users to competitors of Complainant. Respondent’s use of the domain name to display links to Complainant’s competitors is likely to confuse and mislead consumers. Consumer confusion is particularly likely because the domain names either use TIME WARNER, or a minor misspelling of the mark. as a prefix to a geographic phrase or misspelling of the descriptive term “cable.” Due to the fame and registration of the TIME WARNER mark, Respondent clearly had constructive and actual knowledge of Complainant’s rights in the mark. Respondent’s prior UDRP dispute where it had the subject domain name transferred to Complainant also provided actual knowledge to Respondent.
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 argues has rights in the TIME WARNER mark for which it uses cable television broadcasting services, telecommunications and a variety of related services on the Internet. Further, Complainant is the owner of multiple registrations with the USPTO for the TIME WARNER mark (e.g., Reg. No. 1,816,474 registered Jan. 11, 1994). Panels have found that, regardless of the location of the parties, registration of a trademark is evidence of having rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the TIME WARNER mark pursuant to Policy ¶ 4(a)(i).
The <timewarnarcables.com>, <timewarnercabe.com>, <timewarncablle.com>, <timewarnercablekansascity.com>, and <timewarnerdesertcities.com> domain names are confusingly similar to the TIME WARNER mark. In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel found 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). Further, misspelling of a mark and the addition of a descriptive term or a misspelling of one does not negate a finding of confusing similarity. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); 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). Therefore, the disputed domain names are confusingly similar to the 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 commonly known by the disputed domain names, as Respondent is not licensed or authorized to use the TIME WARNER mark. The WHOIS record lists “PPA Media Services / Ryan G Foo” as the domain name registrant. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain to host commercial links to third-party websites that sell services that compete with Complainant. All of the domain names, except <timewarnercabe.com>, resolve to websites that boast a range of commercial hyperlinks. The Panel notes that in Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel held that the operation of a pay-per-click website at a confusingly similar domain name was not 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 such, Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Although there is no evidence in the record as to the use of the <timewarnercabe.com> domain name, the Panel believes Complainant’s statement that all of the domain names are used for commercial hyperlinks. Accordingly, the Panel finds that the <timewarnercabe.com> domain name is likewise not being used in connection with a Policy ¶ 4(c)(i) bona fide offering, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, supra.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant notes that Respondent has already lost a UDRP dispute in 2013 to Complainant. See Time Warner Inc. v. Domain Administrator aka Funacion Private Whois aka PPA Media Servs. a/k/a Ryan G Foo, FA 1475851 (Nat. Arb. Forum Feb. 1, 2013). Panels have found that previous, adverse UDRP decisions are evidence of having developed a pattern of bad faith. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Further, Respondent demonstrates bad faith under Policy ¶ 4(b)(iii) by diverting Internet users to its website that ultimately redirects Internet users to competitors of Complainant. All of the domain names, save <timewarnercabe.com>, resolve to websites that boast a range of commercial hyperlinks. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel concluded that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii). Since these domain names contain hyperlinks that are sufficiently competitive with Complainant’s business, the Panel finds that Respondent registered and is using the disputed domain names disruptively pursuant to Policy ¶ 4(b)(iii).
Respondent’s use of the domain name to display links to Complainant’s competitors is likely to confuse and mislead consumers. Consumer confusion is particularly likely because the domain names either use TIME WARNER, or a minor misspelling of the mark as a prefix to a geographic phrase or misspelling of the descriptive term “cable.” In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found 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. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in a bad faith attempt to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv).
Due to the fame and registration of the TIME WARNER mark, and in light of the use made of the websites associated with the domain names at issue, Respondent clearly had constructive and actual knowledge of Complainant’s rights in the mark. Respondent’s prior UDRP dispute where it had the subject domain name transferred to Complainant is clear evidence of actual knowledge. 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 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).
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 <timewarnarcables.com>, <timewarnercabe.com>, <timewarncablle.com>, <timewarnercablekansascity.com>, and <timewarnerdesertcities.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 30, 2014
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