Warner Bros. Entertainment Inc. v.
Turvill Consultants
Claim
Number: FA0507000514443
Complainant, Warner Bros. Entertainment Inc. (“Complainant”),
is represented by J. Andrew Coombs of J. Andrew Coombs, A Professional Corporation, 450 North Brand Boulevard, Suite 600, Glendale, CA 91203-2349. Respondent is Turvill Consultants (“Respondent”), 265 Port Union Rd., 15525,
Scarborough, Ontario, CA M1C4Z7.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <roadrunnerwebmail.com>, registered with Moniker
Online Services, 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 13, 2005.
On
July 12, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <roadrunnerwebmail.com>
is registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker
Online Services, Inc. has verified that Respondent is bound by the Moniker
Online Services, Inc. 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
July 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 2, 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@roadrunnerwebmail.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
August 5, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <roadrunnerwebmail.com>
domain name is confusingly similar to Complainant’s ROADRUNNER mark.
2. Respondent does not have any rights or
legitimate interests in the <roadrunnerwebmail.com> domain name.
3. Respondent registered and used the <roadrunnerwebmail.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Warner Bros. Entertainment Inc., is the owner of all copyrights to the fanciful
animated character Road Runner from the Looney Tunes short animated
cartoons, which have been in production for over sixty years.
Complainant
holds numerous registrations for its ROADRUNNER mark with the United States
Patent and Trademark Office (“USPTO”) (E.g., Reg. No 1,288,072 issued
July 31, 1984; Reg. No. 2,157,957 issued May 19, 1998; Reg. No. 1,915,162
issued August 19, 1995). Complainant
also owns registration for the trademark in other countries, including Canada (E.g.,
Reg. No. TMA 310,954 issued January 31, 1986; Reg. No. TMA 462,024 issued
August 30, 1996; Reg. No. TMA 503,126 issued October 28, 1998).
Respondent
registered the <roadrunnerwebmail.com> domain name November 18,
2003. When an Internet user types in
the above domain name, he is redirected to an adult-oriented website, for which
Respondent collects a commission. The
website also asks Internet users to pay one dollar to join and view the
adult-oriented material. Additionally,
several pop-up advertisements appear, displaying adult-oriented content.
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. 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.”).
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’s
registrations for its ROADRUNNER mark with the USPTO are sufficient to
establish a prima facie case of rights in the mark. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”). Because
Respondent did not submit a response, Complainant’s presumption of rights in
the mark is not disputed. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (“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. Respondent has the burden
of refuting this assumption.”). The
Panel finds that Complainant has established rights in the mark for purposes of
Policy ¶ 4(a)(i).
Complainant
argues that Respondent’s <roadrunnerwebmail.com> domain name is
confusingly similar to Complainant’s ROADRUNNER mark. The disputed domain name wholly incorporates Complainant’s mark
and adds the generic word “webmail.”
The Panel holds that the addition of generic words is not sufficient to
distinguish the disputed domain name. 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); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409
(WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary
descriptive word . . . nor the suffix ‘.com’ detract from
the overall impression of the dominant part of the name in each case, namely
the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Therefore, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
<roadrunnerwebmail.com> domain name. Complainant’s assertion establishes a prima facie case and
shifts the burden to Respondent. To
meet its burden, Respondent must provide the Panel with evidence that it does
have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”). The Panel will
analyze whether Respondent could meet its burden of establishing rights or
legitimate interests for purposes of Policy ¶ 4(a)(ii).
Complainant
avers that Respondent is using the disputed domain name to redirect Internet
users to adult-oriented websites. The
Panel resolves that the diversion of unsuspecting Internet users to
adult-oriented websites is 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). See Isleworth Land Co. v.
Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that
the respondent’s use of its domain name to link unsuspecting Internet
traffic to an adult-orientated website, containing images of scantily clad
women in provocative poses, did not constitute a connection with a bona fide
offering of goods or services or a noncommercial or fair use); see also
Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec.
17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a pornographic website
did not equate to a bona fide offering of goods or services under Policy
¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under
Policy ¶ 4(c)(iii)).
Moreover,
Respondent did not provide a response or evidence to indicate that it is
commonly known by the disputed domain name.
Without such evidence, the Panel accepts as true Complainant’s
allegations that Respondent is not commonly known by the disputed domain
name. See 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). Thus, the Panel infers that Respondent is not
commonly known by the disputed domain name and has therefore not established
rights or legitimate interests under Policy ¶ 4(c)(ii). See 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 commonly known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark).
Consequently,
the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
provided the Panel with evidence that indicates that Respondent is commercially
benefiting from the misleading <roadrunnerwebmail.com> domain name
by receiving a commission for redirecting Internet users looking for
Complainant’s services to an adult-oriented website and requesting one dollar
to join the adult-oriented website. The
Panel holds that such use is evidence of bad faith use and registration under
Policy ¶ 4(b)(iv). See 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); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum
Sept. 12, 2000) (finding bad faith where the respondent registered the domain
name <bigtex.net> to infringe on the complainant’s goodwill and attract
Internet users to the respondent’s website).
Moreover, the
Panel determines that Respondent’s use of the disputed domain name to redirect
confused Internet users to a adult-oriented website tarnishes Complainant’s
goodwill associated with its mark and is evidence of bad faith use and
registration under Policy ¶ 4(a)(iii). See
Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar.
18, 2003) (finding that the respondent’s tarnishing
use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO
June 27, 2000) (finding that absent contrary evidence, linking the domain names
in question to graphic, adult-oriented websites is evidence of bad faith).
Thus, the Panel
finds that Complainant has satisfied 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 <roadrunnerwebmail.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
August 19, 2005
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