Time Warner Inc. v. THE DATA IN BULKREGISTER.COM'S WHOIS DATABASE IS P / MOMM AMED IA / SEOCHO
Claim Number: FA1508001633705
Complainant is Time Warner Inc. (“Complainant”), represented by Alexander J.A. Garcia of Perkins Coie LLP, Colorado, United States. Respondent is THE DATA IN BULKREGISTER.COM'S WHOIS DATABASE IS P / MOMM AMED IA / SEOCHO (“Respondent”), Unspecified.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <caartoonnetwork.com>, <cartonetwork.com>, <cartoonnrtwork.com>, <catoonetwork.com>, <freddykruger.com>, <seinfield.com>, and <hboforkids.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 17, 2015; the Forum received payment on August 17, 2015.
On August 18, 2015, Enom, Inc. confirmed by e-mail to the Forum that the <caartoonnetwork.com>, <cartonetwork.com>, <cartoonnrtwork.com>, <catoonetwork.com>, <freddykruger.com>, <seinfield.com>, and <hboforkids.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. 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 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2015 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@caartoonnetwork.com, postmaster@cartonetwork.com, postmaster@cartoonnrtwork.com, postmaster@catoonetwork.com, postmaster@freddykruger.com, postmaster@seinfield.com, and postmaster@hboforkids.com. Also on August 19, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s Contentions
1. Complainant itself and through its subsidiaries and affiliates owns all rights, title, and interest in and to the family of marks that incorporate, in whole or in part, CARTOON NETWORK, FREDDY KRUEGER, SEINFELD, and HBO. Complainant has registered the CARTOON NETWORK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,176,023, registered July 28, 1998). Complainant registered the FREDDY KRUEGER mark with the USPTO (Reg. No. 1,568,608, registered November 28, 1989). Complainant registered the SEINFELD mark with the USPTO (Reg. No. 1,808,076, registered November 30, 1993). Finally, Complainant registered the HBO mark with the USPTO (e.g., Reg. No. 1,020,101, registered September 9, 1975). The Panel is directed to Attached Exhibit C for copies of Complainant’s USPTO registrations. These USPTO registrations demonstrate Complainant’s rights in its marks. The disputed domain names are confusingly similar to Complainant’s marks as all but one includes common misspellings of Complainant’s marks and the “.com” generic top-level domain (“gTLD”). Additionally, the <hboforkids.com> domain name is confusingly similar to Complainant’s HBO mark because it incorporates the mark, merely adding the generic terms “for” and “kids.”
2. Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s marks. Second, Respondent is not authorized or licensed to use Complainant’s marks. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, all of Respondent’s disputed domain names redirect Internet users to third-party websites, websites featuring parked pages with links to third-party content, inactive websites, or websites with notices of malicious content. The Panel is directed to Attached Annex D for screenshots of the webpages that resolve from Respondent’s disputed domain names.
3. Respondent has registered and is using the disputed domain names in bad faith. Respondent has a history of bad faith registrations of domain names and of adverse UDRP decisions, implicating Policy ¶ 4(b)(ii) bad faith. Further, Respondent has demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) by engaging in the tactic of typosquatting, making no active use of its disputed domain names, and registering the disputed domain names with actual knowledge of Complainant’s marks.
B. Respondent’s Contentions
1. Respondent did not submit a response in this proceeding.
1. Respondent’s <caartoonnetwork.com>, <cartonetwork.com>, <cartoonnrtwork.com>, <catoonetwork.com>, <freddykruger.com>, <seinfield.com>, and <hboforkids.com>rtget.com> domain names are confusingly similar to Complainant’s CARTOON NETWORK, FREDDY KRUEGER, SEINFELD and HBO marks.
2. Respondent does not have any rights or legitimate interests in the <caartoonnetwork.com>, <cartonetwork.com>, <cartoonnrtwork.com>, <catoonetwork.com>, <freddykruger.com>, <seinfield.com>, and <hboforkids.com> domain names.
3. Respondent registered or used the <caartoonnetwork.com>, <cartonetwork.com>, <cartoonnrtwork.com>, <catoonetwork.com>, <freddykruger.com>, <seinfield.com>, and <hboforkids.com> 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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that all of the disputed domain names share the same administrative and technical contact email address, namely dommet6@mail.ru. Similarly, Complainant argues that all of these domain names are registered with the same registrar, Enom, Inc. The Panel agrees, and finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
Complainant itself and through its subsidiaries and affiliates owns all rights, title, and interest in and to the family of marks that incorporate, in whole or in part, CARTOON NETWORK, FREDDY KRUEGER, SEINFELD, and HBO. Complainant has registered the CARTOON NETWORK mark with the USPTO (e.g., Reg. No. 2,176,023, registered July 28, 1998). Complainant registered the FREDDY KRUEGER mark with the USPTO (Reg. No. 1,568,608, registered November 28, 1989). Complainant registered the SEINFELD mark with the USPTO (Reg. No. 1,808,076, registered November 30, 1993). Finally, Complainant registered the HBO mark with the USPTO (e.g., Reg. No. 1,020,101, registered September 9, 1975). Complainant asserts that these USPTO registrations demonstrate its rights in its marks. The Panel concludes that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its marks for the purposes of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Accordingly, the Panel finds that Complainant has demonstrated its rights in its marks pursuant to Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s marks as all but one includes common misspellings of Complainant’s marks. Further, Complainant contends that the <hboforkids.com> domain name is confusingly similar to Complainant’s HBO mark because it incorporates the mark, merely adding the generic terms “for” and “kids.” Past panels have found confusingly similarity pursuant to Policy ¶ 4(a)(i) where a respondent’s disputed domain names capitalized on simple and common misspellings of a complainant’s mark. 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). Past panels have also concluded that the addition of generic terms to a complainant’s mark does not negate a finding of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). For these reasons, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s marks per 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 argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant asserts that Respondent is not commonly known by the disputed domain names or any variant of Complainant’s marks. Additionally, Complainant contends that Respondent is not authorized or licensed to use Complainant’s marks. The Panel notes that the WHOIS information for the <caartoonnetwork.com>, <cartoonnrtwork.com>, <catoonetwork.com>, <freddykruger.com>, and <hboforkids.com> domain names merely lists “THE DATA IN BULKREGISTER.COM'S WHOIS DATABASE IS P” as registrant, the <cartonetwork.com> domain name lists “MOMM AMED IA” as registrant, and the <seinfield.com> domain name lists “NA NA” as registrant. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant alleges that Respondent is not making a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Complainant argues that all of Respondent’s disputed domain names redirect Internet users to third-party websites, websites featuring parked pages with links to third-party content, inactive websites, or websites with notices of malicious content. Past panels have concluded that there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent uses a disputed domain name to redirect Internet users to a website unrelated to the complainant. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Past panels have also found that there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent fails to make an active use of a domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)).
Finally, past panels have concluded that a respondent’s use of a disputed domain name to generate revenue via advertisement and affiliate fees violates Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). For these reasons, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent has registered and is using the disputed domain names in bad faith. Complainant alleges that Respondent has a history of bad faith registration of domain names and of adverse UDRP decisions. See, e.g., Yahoo! Inc. and HotJobs.com, Ltd. v. Alex Vorot a/k/a Arzra Khan, a/k/a Registrate Co., a/k/a NA, a/k/a Andrey Michailov, a/k/a Amjad Kauser, a/k/a Lorna Kang, a/k/a Venta, a/k/a Dotsan, a/k/a Yong Li, a/k/a Mahmoud Nadim, FA0305000159547 (Nat. Arb. Forum Jul. 16, 2003) (finding against respondent associated with domnet6@mail.ru); see also Amazon.com Inc. v. The data in Bulkregister.com’s WHOIS database is p aka Domain Host aka Andrey Michailov aka Momm Amed Ia, FA0407000293737 (Nat. Arb. Forum Sept. 2, 2004) (finding against “Momm Amed Ia” and “The data in Bulkregister.com’s WHOIS database is p”). Past panels have found bad faith 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 complainants. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). As such, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant makes three arguments under Policy ¶ 4(a)(iii), and they will be assessed in the following paragraphs.
First, Complainant contends that Respondent has engaged in the tactic of typosquatting. Past panels have found bad faith under Policy ¶ 4(a)(iii) where a respondent registered domain names that were mere typosquatted versions of a complainant’s mark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
Second, Complainant argues that Respondent is not making an active use of its disputed domain names. Past panels have also concluded that a respondent’s failure to make an active use of a disputed domain name is evidence of bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Third, Complainant contends that Respondent registered the disputed domain names with actual knowledge of Complainant’s marks. Specifically, Complainant argues that because of the fame and notoriety of its marks, Respondent must have been aware of Complainant’s marks at the time of the domain name registrations. Past panels have found bad faith where a respondent was well-aware of a complainant’s mark at the time the respondent registered the disputed domain name. See 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). For these reasons, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to 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 <caartoonnetwork.com>, <cartonetwork.com>, <cartoonnrtwork.com>, <catoonetwork.com>, <freddykruger.com>, <seinfield.com>, and <hboforkids.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 24, 2015
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