Time Warner, Inc. v. Erik Little
Claim
Number: FA0504000464815
Complainant is Time Warner, Inc. (“Complainant”), represented
by James R. Davis, of Arent Fox PLLC, 1050
Connecticut Avenue, NW, Washington, DC 20036.
Respondent is Erik Little (“Respondent”),
P.O. Box 1754, McKinney, TX 75070.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <compuservd.com>, <sportsillustratef.com>,
and <sportsillustratwd.com>, registered with Names4Ever.
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 April
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 22, 2005.
On
April 22, 2005, Names4Ever confirmed by e-mail to the National Arbitration
Forum that the domain names <compuservd.com>, <sportsillustratef.com>,
and <sportsillustratwd.com> are registered with Names4Ever and
that Respondent is the current registrant of the name. Names4Ever has verified that Respondent is
bound by the Names4Ever registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
April 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@compuservd.com, postmaster@sportsillustratef.com,
and postmaster@<sportsillustratwd.com> by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 25, 2005, 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." 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 <compuservd.com>,
<sportsillustratef.com>, and <sportsillustratwd.com>
domain names are confusingly similar to Complainant’s COMPUSERVE and SPORTS
ILLUSTRATED marks.
2. Respondent does not have any rights or
legitimate interests in the <compuservd.com>, <sportsillustratef.com>,
and <sportsillustratwd.com> domain names.
3. Respondent registered and used the <compuservd.com>,
<sportsillustratef.com>, and <sportsillustratwd.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Time Warner, Inc., holds trademark registrations with the United States Patent
and Trademark Office for the COMPUSERVE mark (Reg. No. 1,654,785 issued August
27, 1991) and the SPORTS ILLUSTRATED mark (Reg. No. 754,203 issued August 6,
1963).
Respondent
registered the <compuservd.com>, <sportsillustratef.com>,
and <sportsillustratwd.com> domain names on February 15,
2005. Respondent is using the disputed
domain names to redirect Internet users to Respondent’s commercial website that
is not affiliated with Complainant’s business.
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."
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.
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.
Complainant
established rights in the COMPUSERVE and SPORTS ILLUSTRATED marks through
registration with the United States Patent and Trademark office in addition to
continuous use of the marks in commerce.
See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting
this assumption).
The <compuservd.com>
domain name registered by Respondent is confusingly similar to Complainant’s
COMPUSERVE mark because the domain name features Complainant’s mark in its
entirety but replaces the letter “e” at the end of the mark with the letter
“d.” The replacement of the letter “e”
with the letter “d” in Complainant’s mark does not distinguish the confusingly
similar aspects of the <compuservd.com> domain name from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global
Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name
which differs by only one letter from a trademark has a greater tendency to be
confusingly similar to the trademark where the trademark is highly
distinctive); see also Am. Airlines, Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000)
(finding <americanairline.com> "effectively identical and certainly
confusingly similar" to the complainant's AMERICAN AIRLINES registered
marks); see also State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> is confusingly similar to the complainant’s
STATE FARM mark).
The <sportsillustratef.com>
and <sportsillustratwd.com> domain names are confusingly similar to
Complainant’s SPORTS ILLUSTRATED mark because the domain names incorporate
Complainant’s mark in its entirety and replace the letter “d” in the <sportsillustratef.com>
domain name with the letter “f” and replace the letter “e” in the <sportsillustratwd.com>
domain name with the letter “w.” The
replacement of letters in Complainant’s mark does not negate the confusingly
similar aspects of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). 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 Hewlett-Packard Co. v. Zuccarini, FA
94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar to the
complainant’s HEWLETT-PACKARD mark).
Furthermore, the
addition of the generic top-level domain “.com” does not distinguish the
disputed domain names from Complainant’s mark.
See Little Six, Inc. v.
Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that
<mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE
trademark and service mark); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that
the domain name <nike.net> is identical to the complainant’s famous NIKE
mark); see also Kabushiki Kaisha
Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that
the domain name <toshiba.net> is identical to the complainant’s trademark
TOSHIBA); 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); see also Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of
the generic top-level domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants");
see also Snow Fun, Inc. v. O'Connor,
FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the <compuservd.com>,
<sportsillustratef.com>, and <sportsillustratwd.com> domain
names. When a complainant establishes a
prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent lacks rights and legitimate interests in the disputed domain
names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
the respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the
mere assertion by the complainant that the respondent has no rights or
legitimate interests is sufficient to shift the burden of proof to the
respondent to demonstrate that such rights or legitimate interests do exist); see
also Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
response, the respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
If Complainant
makes a prima facie showing and
Respondent does not respond, the Panel may accept all reasonable inferences and
assertions in the Complaint as true. See 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.”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence); see also
Charles Jourdan AG. V. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the panel to draw adverse inferences from the respondent’s
failure to reply to the complaint).
Respondent is
using the <compuservd.com>, <sportsillustratef.com>,
and <sportsillustratwd.com> domain names to redirect Internet
users to Respondent’s commercial website that is not affiliated with
Complainant’s business. Respondent’s
use of a domain name confusingly similar to Complainant’s COMPUSERVE and SPORTS
ILLUSTRATED marks to redirect Internet users interested in Complainant’s
products to a commercial website that is not affiliated with Complainant’s
business is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or
fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Pelham,
FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent
was using the infringing domain name to sell prescription drugs it could be
inferred that the respondent was opportunistically using the complainant’s mark
in order to attract Internet users to its website); see also Ziegenfelder Co. v. VMH
Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests based on the fact that the domain names bear no
relationship to the business of the respondent and that the respondent would
only legitimately choose to use the complainant’s mark in a domain name if the
respondent was seeking to create an impression that the two businesses were
affiliated).
Additionally, Respondent has offered no evidence and, there is no proof
in the record, suggesting that Respondent is commonly known by the <compuservd.com>, <sportsillustratef.com>,
or <sportsillustratwd.com> domain
name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where the respondent was not commonly known by the mark and never
applied for a license or permission from the complainant to use the trademarked
name); see also Gallup Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
the respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent using the
domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is capitalizing on the goodwill of the COMPUSERVE
and SPORTS ILLUSTRATED marks by using the disputed
domain names to redirect Internet users to a commercial website. Since the disputed domain names are
confusingly similar to Complainant’s marks, a consumer searching for
Complainant could become confused as to Complainant’s affiliation with the
resulting website. Therefore,
Respondent’s opportunistic and commercial use of the disputed domain names
represents bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that, if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain).
Furthermore, Respondent had
actual or constructive knowledge of Complainant’s rights in the COMPUSERVE and SPORTS ILLUSTRATED marks due to Complainant’s registration of the marks with
the United States Patent and Trademark Office.
Thus, the Panel concludes that Respondent’s registration of the <compuservd.com>,
<sportsillustratef.com>, and <sportsillustratwd.com> domain names with actual or constructive knowledge of
Complainant’s rights in the COMPUSERVE and SPORTS ILLUSTRATED marks is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Orange
Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive
knowledge of the complainant’s EXXON mark given the worldwide prominence of the
mark and thus the respondent registered the domain name in bad faith); see
also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(determining that Policy paragraph 4(b) sets forth certain circumstances,
without limitation, that shall be evidence of registration and use of a domain
name in bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <compuservd.com>, <sportsillustratef.com>,
and <sportsillustratwd.com> domain names be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
June 8, 2005
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