Time Warner Inc. v. yangzhichao
Claim Number: FA1611001701934
Complainant is Time Warner Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is yangzhichao (“Respondent”), Peoples Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <timewarnerbenifits.com>, registered with 22net, Inc..
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 8, 2016; the Forum received payment on November 8, 2016.
On November 8, 2016, 22net, Inc. confirmed by e-mail to the Forum that the <timewarnerbenifits.com> domain name is registered with 22net, Inc. and that Respondent is the current registrant of the name. 22net, Inc. has verified that Respondent is bound by the 22net, 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 November 9, 2016, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 29, 2016 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@timewarnerbenifits.com. Also on November 9, 2016, 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 November 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 may issue 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered its TIME WARNER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,816,474, registered Jan. 11, 1994), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <timewarnerbenifits.com> domain name is confusingly similar to Complainant’s mark because it incorporates the TIME WARNER mark in its entirety (less the space) and merely adds a misspelled version of the generic term “benefits” and the generic top-level domain (“gTLD”) “.com.” Complainant also operates a website for its employees at <timewarnerbenefits.com>.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use its TIME WARNER mark in any fashion, and Respondent is not commonly known by the <timewarnerbenifits.com> domain name. Respondent is using the disputed domain name to redirect Internet users to various websites that distribute malicious computer software and phish for personal information. Such use cannot be construed as a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using <timewarnerbenifits.com> in bad faith. Respondent is attempting to commercially gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the disputed name with Complainant’s TIME WARNER mark. Further, Respondent is fraudulently attempting to acquire Internet users’ personal information and using the domain name to make unsuspecting Internet users download viruses. Such use of the resolving websites at the disputed domain names is clearly bad faith, and a search of UDRP decisions may lead to finding Respondent in a pattern of this bad faith conduct.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding be in the English language pursuant to UDRP Rule 11(a). The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. However, pursuant to Rule 11(a), the Panel determines that the language change requirement has been satisfied. Complainant contends that Respondent has a knowledge or proficiency in English because the disputed domain name is based on English terms, and Respondent allegedly has registered many other domain names in English terms that resolve to websites featuring the English language. After considering the circumstances of the present case, the Panel finds that the proceeding should be in English.
Complainant is Time Warner Inc. of New York, NY, USA. Complainant is the owner of global rights, and domestic registrations, for the mark TIME WARNER, along with variations thereof, which it has continuously used in commerce since at least as early as 1995 in connection with its provision of entertainment and related goods and services.
Respondent is Yangzhichao, of the Peoples Republic of China. Respondent’s registrar’s address is listed as being in China as well. Respondent registered the <timewarnerbenifits.com> domain name on or about November 7, 2014,
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(f), 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 (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 because it has registered its TIME WARNER mark with the USPTO (Reg. No. 1,816,474, registered Jan. 11, 1994), it has rights in the mark under Policy ¶ 4(a)(i). Past panels have found that USPTO registration confers rights in a mark, even when the registration is not from the governmental authority of the country that a respondent is operating in. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). The Panel here finds that Complainant has rights in the TIME WARNER mark.
Complainant further contends that Respondent’s <timewarnerbenifits.com> domain name is confusingly similar to its TIME WARNER mark. Complainant claims that Respondent has merely added a misspelled version of the generic term “benefits” to its wholly incorporated TIME WARNER mark (less the space and addition of a gTLD). Complainant also claims it operates a website for its employees on <timewarnerbenefits.com>. Prior panels have found a disputed domain name to be confusingly similar to a complainant’s mark where the only difference is a generic term or a common misspelling. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”). The Panel here finds that <timewarnerbenifits.com> is confusingly similar to Complainant’s TIME WARNER mark under Policy ¶ 4(a)(i).
Respondent makes no contention with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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). Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the <timewarnerbenifits.com> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its TIME WARNER mark in any fashion, and that Respondent is not commonly known by the disputed domain name or any variant of it. The Panel notes that the WHOIS information for the domain name in question lists “Yangzhichao” as the registrant. Previous panels have concluded that a respondent is not commonly known by a domain name when there is conflicting WHOIS information and the Respondent has failed to provide any contrary evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The Panel here finds that Respondent is not commonly known by <timewarnerbenifits.com>.
Complainant alleges that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant alleges that Respondent is using the <timewarnerbenifits.com> domain name to redirect Internet users to various phishing and malware websites. Prior panels have held that neither phishing nor malicious software can constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”); see also Ceridian Corp. v. Versata Software, Inc., FA 1259927 (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)”). The Panel here finds that Respondent does not have any rights or legitimate interests in the <timewarnerbenifits.com> domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response to this action Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent has registered and is using the <timewarnerbenifits.com> domain name in bad faith. Complainant alleges that Respondent has had numerous UDRP proceedings decided against it, but has not provided any evidence or citations for these decisions. Complainant only has provided conclusory allegations that “Searches through the UDRP decision databases reveal that Respondent has engaged in an ongoing pattern [of bad faith].” Without more, the Panel cannot find that Respondent has engaged in a pattern of bad faith domain name registrations.
Complainant also argues that Respondent registered the disputed domain name in an attempt to create confusion as to source, sponsorship, affiliation, or endorsement, and thus commercially gain in bad faith. Complainant presumes that Respondent is commercially gaining from the information it attempts to solicit from Internet users, and argues that such use is at the expense of its TIME WARNER mark. Complainant also alleges that Respondent is attempting to gain traffic at its <timewarnerbenifits.com> domain name from Internet users who misspell Complainant’s <timewarnerbenefits.com> domain. Prior panels have found that a respondent’s intent to deceive or specifically divert the complainant’s users can be bad faith under Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). The Panel here finds that Respondent’s registration and use of <timewarnerbenifits.com> is in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also argues that Respondent is redirecting Internet users from the <timewarnerbenifits.com> domain name to websites that attempt to phish personal information and distribute malicious computer software. Complainant has provided screen shots from five different websites that it allegedly was directed to when attempting to access the disputed domain name. Previous panels have held that certain conduct can demonstrate bad faith outside of Policy ¶ 4(b), and that both phishing and attempting to distribute malicious software to unsuspecting Internet users can constitute bad faith under Policy ¶ 4(a)(iii). See Citigroup Inc. v. Domain MANAGER / Domain Brokers, FA1505001621817 (Forum July 13, 2015) (finding that the respondent’s use of a survey, in which Internet users were encouraged to enter personal information to complete, indicated bad faith registration and use pursuant to Policy ¶ 4(a)(iii)); see also Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1211001473573 (Forum Jan. 21, 2013) (holding that because the respondent used the disputed domain name to attempt to facilitate the download of malicious software to the computers of the website’s visitors, the respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii)). The Panel here finds that Respondent’s registration and use of <timewarnerbenifits.com> is in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <timewarnerbenifits.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 14, 2016
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