Home Box Office, Inc. v. Iurii Kalmykov
Claim Number: FA1710001751769
Complainant is Home Box Office, Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie, Colorado, USA. Respondent is Iurii Kalmykov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hboemea.com> and <hbo-international.com>, registered with Domain.Com, Llc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 2, 2017; the Forum received payment on October 2, 2017.
On October 2, 2017, Domain.Com, Llc confirmed by e-mail to the Forum that the <hboemea.com> and <hbo-international.com> domain names are registered with Domain.Com, Llc and that Respondent is the current registrant of the names. Domain.Com, Llc has verified that Respondent is bound by the Domain.Com, Llc 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 October 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 2017 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@hboemea.com and postmaster@hbo-international.com. Also on October 5, 2017, 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 October 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has continuously --since at least as early as 1972, used the HBO mark in commerce for various broadcasting, media, and entertainment services.
Complainant registered the HBO mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,020,101, registered Sep. 9, 1975).
Respondent’s <hboemea.com> and <hbo-international.com> domain names are confusingly similar to Complainant’s mark as they wholly incorporate HBO and add the generic terms “emea,” (a common abbreviation for Europe, the Middle East, and Africa), “-international,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <hboemea.com> and <hbo-international.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent used the domain names in connection with a fraudulent phishing scheme whereby Respondent, posing as an agent of HBO named “Lisa Galente,” attempted to dupe licensing agencies to enter into contracts and submit payment in hopes of obtaining rights to entertainment and media content owned by Complainant.
Respondent registered and uses the <hboemea.com> and <hbo-international.com> domain names in bad faith. Respondent passes itself off as Complainant to intentionally create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of a complainant constitutes bad faith. Further, Respondent had actual knowledge of Complainant’s rights in the HBO mark demonstrated by the fact that Complainant’s HBO mark is well known and Respondent passed itself off as being affiliated with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the HBO mark.
Respondent registered the at-issue domain name after Complainant acquired rights in HBO.
Respondent registered and used the domain names in connection with a phishing scheme.
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its HBO mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Respondent’s <hboemea.com> and <hbo-international.com> domain names each contain Complainant’s HBO trademark suffixed with the generic terms, either “emea” or “-international”. Respondent adds a top-level domain name, here “.com,” to complete the domain names. The differences between each domain name and Complainant’s HBO mark are, under the Policy, insufficient to materially distinguish either one from Complainant’s HBO trademark. In fact, the domain names’ geographically related terms add to any confusion as they each suggest Complainant’s worldwide business. Therefore, the Panel finds that Respondent’s <hboemea.com> and <hbo-international.com> domain names are each confusingly similar to Complainant’s HBO trademark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either of the at-issue domain names.
WHOIS information for the at-issue domain names lists “Iurii Kalmykov / Iurii Kalmykov” as the domain names’ registrant. There is nothing in the record that otherwise suggests Respondent is commonly known by either Respondent’s <hboemea.com> or its <hbo-international.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by either of the at-issue domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) … does not apply); see also, Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent uses the at-issue domain names to pass itself off as Complainant to perpetuate a phishing scheme. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also, Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the foregoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names.
The domain names were each registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding the <hboemea.com> and <hbo-international.com> domain names.
As mentioned above Respondent uses the at-issue domain names to perpetuate a phishing scheme. The scheme relies on Respondent passing itself off as an agent of Complainant so that it might entice third parties into phony licensing agreements whereby the “licensee” victim is duped into making payments to Respondent. Using the domain names to intentionally create a likelihood of confusion as to Complainant’s sponsorship of the trademark laden domain names demonstrates Respondent’s bad faith registration and use of such domain names under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Such phishing by Respondent to fraudulently obtain funds from third parties via bogus email communications or otherwise also indicates bad faith under the Policy outside of paragraph 4(b)(iv). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”); see also, Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Finally, Respondent had actual knowledge of Complainant’s rights in the HBO mark when Respondent registered the <hboemea.com> and <hbo-international.com> domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of Complainant’s trademark to blatantly attempt to pass itself off as Complainant. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hboemea.com> and <hbo-international.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 29, 2017
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