Time Warner Inc. v. Domain Administrator / Fundacion Private Whois aka Ryan G Foo / PPA Media Services
Claim Number: FA1402001543555
Complainant is Time Warner Inc. (“Complainant”), represented by James R. Davis of Arent Fox LLP, Washington D.C., USA. Respondent is Domain Administrator / Fundacion Private Whois (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <truebloodwatchfree.info>, <truebloodseason4.org>, <www-cnn.com>, <newscnn.com>, <ben10games.com>, <tbskids.org>, <legobatman.com>, <batman-slotmachine.com>, and <gameofthrones.com>, registered with Internet.bs Corp.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2014; the National Arbitration Forum received payment on February 13, 2014.
On February 21, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <truebloodwatchfree.info>, <truebloodseason4.org>, <www-cnn.com>, <newscnn.com>, <ben10games.com>, <tbskids.org>, <legobatman.com>, <batman-slotmachine.com>, and <gameofthrones.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 March 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2014 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@truebloodwatchfree.info, postmaster@truebloodseason4.org, postmaster@www-cnn.com, postmaster@newscnn.com, postmaster@ben10games.com, postmaster@tbskids.org, postmaster@legobatman.com, postmaster@batman-slotmachine.com, and postmaster@gameofthrones.com. Also on March 4, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" 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 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
Complainant made the following contentions
i. Complainant, Time Warner Inc., is a leading media and entertainment company, whose businesses include interactive services, filmed entertainment, television networks, and publishing.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the following marks:
1. TRUE BLOOD (Reg. No. 3,531,720, registered November 11, 2008);
2. CNN (Reg. No. 1,597,839, registered May 22, 1990);
3. BEN 10 (Reg. No. 3,579,779, registered February 24, 2009);
4. TBS (Reg. No. 3,225,560, registered April 3, 2007);
5. BATMAN (Reg. No. 804,709, registered March 1, 1966);
6. GAME OF THRONES (Reg. No. 3,986,288, registered June 28, 2011).
iii. The disputed domain names are nearly identical and confusingly similar to Complainant’s marks.
i. Respondent has no rights or legitimate interests in the disputed domain names.
ii. Respondent is not commonly known by the disputed domain names.
iii. Respondent is using the disputed domain names with commercial websites that include commercial links to third-party sites that sell services that compete with Complainant.
i. Respondent registered and is using the disputed domain name in bad faith.
ii. Respondent has offered to sell the infringing domain names.
iii. Respondent has engaged in a pattern of infringing on third-party marks.
iv. Respondent is using the disputed domain names with commercial websites that include commercial links to third-party sites that sell services that compete with Complainant.
v. Respondent is deemed to at least have had constructive knowledge of Complainant’s rights in its registered marks by virtue of the federal trademark registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 although Respondent uses aliases in the WHOIS records, it is clear that a single entity owns and controls the domain names. Complainant argues that the National Arbitration Forum and others have already determined, on numerous occasions, that “Fundacion Private Whois / Domain Administrator” and “Ryan G Foo / PPA Media Services” are the same entity or share common ownership and control. The Panel agrees with this submission and finds that a single entity owns and controls the domain names and that accordingly the Complaint may proceed in its present form.
1.Complainant is a United States company that is a leading media and entertainment company, whose businesses include interactive services, filmed entertainment, television networks, and publishing.
2.Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the following marks:
1. TRUE BLOOD (Reg. No. 3,531,720, registered November 11, 2008);
2. CNN (Reg. No. 1,597,839, registered May 22, 1990);
3. BEN 10 (Reg. No. 3,579,779, registered February 24, 2009);
4. TBS (Reg. No. 3,225,560, registered April 3, 2007);
5. BATMAN (Reg. No. 804,709, registered March 1, 1966);
6. GAME OF THRONES (Reg. No. 3,986,288, registered June 28, 2011).
3. Complainant has common law rights in the BEN 10 mark dating back to January 13, 2006 as well as common law rights in the TBS mark dating back to June 4, 2002 according to Policy ¶ 4(a)(i).
4.Respondent registered the disputed domain names on the following dates:
i. <truebloodwatchfree.info> on January 11, 2010;
ii. <truebloodseason4.org> on June 27, 2011;
iii. <www-cnn.com> on August 3, 2002;
iv. <newscnn.com> on April 4, 2004;
v. <ben10games.com> on December 28, 2005;
vi. <tbskids.org> on December 1, 2002;
vii. <legobatman.com> January 24, 2006;
viii. <batman-slotmachine.com> January 31, 2012;
ix. <gameofthrones.com> on May 3, 2009.
5 .Respondent is using the disputed domain names with commercial websites that include commercial links to third-party sites that sell services that compete with Complainant.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant submits that it is a leading media and entertainment company, whose businesses include interactive services, filmed entertainment, television networks, and publishing and the Panel agrees with that statement. Complainant adduces evidence to show that it owns trademark registrations with the USPTO for the following marks: TRUE BLOOD (Reg. No. 3,531,720, registered November 11, 2008); CNN (Reg. No. 1,597,839, registered May 22, 1990); BEN 10 (Reg. No. 3,579,779, registered February 24, 2009); TBS (Reg. No. 3,225,560, registered April 3, 2007); BATMAN (Reg. No. 804,709, registered March 1, 1966); GAME OF THRONES (Reg. No. 3,986,288, registered June 28, 2011). See Complainant’s Annex B. The Panel notes that Respondent appears to reside within Panama. However, the Panel holds that it is irrelevant under Policy ¶ 4(a)(i) whether Complainant registered its mark in the country in which Respondent resides, so long as it has registered its mark in some jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has proven that it has rights in the TRUE BLOOD, CNN, BATMAN, BEN 10, TBC, and GAME OF THRONES marks pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The Panel notes that Respondent registered its <ben10games.com> and <tbskids.org> domain names before it registered its BEN 10 and TBS marks with a trademark agency. The Panel finds that the registration of a valid trademark is unnecessary to prove rights in the BEN 10 and TBS marks, as long as Complainant can prove common law rights in the marks under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
The Panel notes that Complainant’s first use in commerce of the BEN 10 mark was January 13, 2006, and Complainant’s first use in commerce of the TBS mark was June 4, 2002. Complainant contends that it advertises and promotes its services under its mark via the Internet, and owns and uses domain names that incorporate its mark. Complainant claims that its marks have been and continue to be widely publicized through substantial advertising. Complainant submits that it is invested substantial sums of money developing, marketing, and delivering high-quality content through multiple distribution outlets. In Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011), the Panel “Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” Therefore, the Panel determines that Complainant has common law rights in the BEN 10 mark dating back to January 13, 2006 as well as common law rights in the TBS mark dating back to June 4, 2002 according to Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s respective marks. Complainant alleges that Respondent’s <truebloodwatchfree.info> and <truebloodseason4.org> domain names are confusingly similar to Complainant’s TRUE BLOOD mark. The Panel notes that Respondent uses Complainant’s TRUE BLOOD mark in its entirety and adds the generic or descriptive terms “watch free” or “season 4.” The Panel finds that Respondent’s addition of generic or descriptive terms to a mark is inconsequential to a Policy ¶ 4(a)(i) analysis. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel observes that Respondent removes the spaces in Complainant’s TRUE BLOOD mark and adds a generic top-level domain (“gTLD”) to the <truebloodwatchfree.info> and <truebloodseason4.org> domain names. The Panel holds that Respondent’s elimination of spaces and inclusion of a gTLD does not distinguish the disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Accordingly, the Panel find that Respondent’s <truebloodwatchfree.info> and <truebloodseason4.org> domain names are confusingly similar to Complainant’s TRUE BLOOD mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <www-cnn.com> and <newscnn.com> domain names are confusingly similar to Complainant’s CNN mark. The Panel observes that Respondent adds the descriptive term “news” to Complainant’s CNN mark in the <newscnn.com> domain name. The Panel finds that Respondent’s addition of a descriptive term does not prevent a panel from finding confusing similarity under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel observes that Respondent adds the acronym “www” and a hyphen to Complainant’s CNN mark in the <www-cnn.com> domain name. The Panel determines that Respondent’s inclusion of the “www” or punctuation does not differentiate the disputed domain name from Complainant’s mark according to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Lastly, the Panel notes that Respondent adds the gTLD “.com” to Complainant’s CNN mark in its <www-cnn.com> and <newscnn.com> domain names. The Panel holds that Respondent’s addition of a gTLD does not distinguish the disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i). See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Consequently, the Panel finds that Respondent’s <www-cnn.com> and <newscnn.com> domain names are confusingly similar to Complainant’s CNN mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <ben10games.com> domain name is confusingly similar to Complainant’s BEN 10 mark. The Panel notes that Respondent adds the generic word “games” to Complainant’s BEN 10 mark. The Panel holds that Respondent’s addition of a generic term to Complainant’s CNN mark is irrelevant under Policy ¶ 4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). Finally, the Panel observes that Respondent removes the space in Complainant’s BEN 10 mark and adds the gTLD “.com.” The Panel determines that Respondent’s omission of a space and addition of a gTLD to Complainant’s BEN 10 mark does not differentiate the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel conclude that Respondent’s <ben10games.com> domain name is confusingly similar to Complainant’s BEN 10 mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <tbskids.org> domain name is confusingly similar to Complainant’s TBS mark. The Panel observes that Respondent adds the generic term “kids” to Complainant’s TBS mark. The Panel finds that Respondent’s addition of a generic term to Complainant’s mark does not differentiate the disputed domain name from the mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). The Panel observes that Respondent adds the gTLD “.org” to Complainant’s TBS mark. The Panel determines that Respondent’s addition of a gTLD is inconsequential to a confusingly similar analysis under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Thus, the Panel determines that Respondent’s <tbskids.org> domain name is confusingly similar to Complainant’s TBS mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <legobatman.com> and <batman-slotmachine.com> domain names are confusingly similar to Complainant’s BATMAN mark. The Panel observes that Respondent adds the generic or descriptive terms “lego” or “slotmachine” to Complainant’s BATMAN mark. The Panel determines that Respondent’s addition of a generic of descriptive term or phrase does not prevent a panel from finding confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel observes that Respondent adds a hyphen and the gTLD “.com” to Complainant’s mark in the <legobatman.com> and <batman-slotmachine.com> domain names. The Panel holds that Respondent’s inclusion of punctuation and a gTLD does not distinguish the disputed domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Accordingly, the Panel finds that Respondent’s <legobatman.com> and <batman-slotmachine.com> domain names are confusingly similar to Complainant’s BATMAN mark according to Policy ¶ 4(a)(i).
Complainant submits that Respondent’s <gameofthrones.com> domain name is identical to Complainant’s BATMAN mark. The Panel notes that Respondent eliminates the spaces and includes the gTLD “.com” in the disputed domain name. In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found “<hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.” Therefore, the Panel determines that Respondent’s omission of spaces and addition of a gTLD to Complainant’s GAME OF THRONES mark is irrelevant to a Policy ¶ 4(a)(i) determination. Thus, the Panel finds Respondent’s <gameofthrones.com> domain name is identical to Complainant’s BATMAN mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
(a)Respondent has chosen to take Complainant’s respective marks as particularized above and to use them in its corresponding domain names, adding the generic words and making the other minor alterations particularized above;
(b) Respondent has then used the disputed domain names with commercial websites that include commercial links to third-party sites that sell services that compete with Complainant;
(c)Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant asserts that Respondent is not commonly known by the <truebloodwatchfree.info>, <truebloodseason4.org>, <www-cnn.com>, <newscnn.com>, <ben10games.com>, <tbskids.org>, <legobatman.com>, <batman-slotmachine.com>, and <gameofthrones.com> domain names. The Panel observes that the WHOIS information identifies “Domain Administrator / Fundacion Private Whois aka Ryan G Foo / PPA Media Services” as the registrant of the disputed domain names. See Complainant’s Annex E. The Panel also notes that Respondent fails to provide any evidence that it is known by the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the <truebloodwatchfree.info>, <truebloodseason4.org>, <www-cnn.com>, <newscnn.com>, <ben10games.com>, <tbskids.org>, <legobatman.com>, <batman-slotmachine.com>, and <gameofthrones.com> domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name);
(e)Complainant argues that Respondent is using the <truebloodwatchfree.info>, <truebloodseason4.org>, <www-cnn.com>, <newscnn.com>, <ben10games.com>, <tbskids.org>, <legobatman.com>, <batman-slotmachine.com>, and <gameofthrones.com> domain names with commercial websites that include commercial links to third-party sites that sell services that compete with Complainant. The Panel notes that Respondent’s disputed domain names either provide competing hyperlinks with titles such as “$2.95 Domain at Go Daddy,” “Watch TV Episodes Online,” “Play Batman Game Online,” or to link to a service that competes with Complainant’s services. See Complainant’s Annex G. Prior panels have found that the offering of competing and unrelated hyperlinks is not protected by Policy ¶¶ 4(c)(i), (iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Consequently, the Panel finds that Respondent’s <truebloodwatchfree.info>, <truebloodseason4.org>, <www-cnn.com>, <newscnn.com>, <ben10games.com>, <tbskids.org>, <legobatman.com>, <batman-slotmachine.com>, and <gameofthrones.com> domain names are not being used for a Policy 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain
names were registered and used in bad faith. That is so for the following
reasons.
First, Complainant asserts that Respondent has offered to sell the <www-cnn.com>, <tbskids.org>, and <gameofthrones.com> domain names. The Panel notes that these domain names state “Buy this domain,” “This domain may be for sale by its owner,” or resolve to a website stating that the domain name may be for sale. See Complainant’s Annex G. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel determined that “Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).” Thus, the Panel determines that Respondent’s offer to sell the <www-cnn.com>, <tbskids.org>, and <gameofthrones.com> domain names shows by inference that they were registered in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent has engaged in a pattern of infringing on third-party marks. The Panel notes that Respondent has been involved in several UDRP proceedings resulting in findings of bad faith use and transfer of the domain names to the trademark holder. See Complainant’s Exhibit F; Chevron Intellectual Property LLC v. Fundacion Private Whois / Domain Administrator, FA 1438289 (Nat. Arb. Forum May 16, 2012); Thomson Reuters v. Fundacion Private Whois / Domain Administrator, FA 1439297 (Nat. Arb. Forum May 24, 2012); Xcentric Ventures, LLC d/b/a www.RipoffReport.com v. Fundacion Private Whois / Domain Administrator, FA 1441027 (Nat. Arb. Forum June 7, 2012) and others. Accordingly, the Panel finds that Respondent’s previous UDRP proceedings resulting in findings of bad faith and transfer evidence bad faith pursuant to Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Thirdly, Complainant contends that Respondent is using the <truebloodwatchfree.info>, <truebloodseason4.org>, <www-cnn.com>, <newscnn.com>, <ben10games.com>, <tbskids.org>, <legobatman.com>, <batman-slotmachine.com>, and <gameofthrones.com> domain names with commercial websites that include commercial links to third-party sites that sell services that compete with Complainant. See Complainant’s Exhibit G. The Panel notes that Respondent’s use of the disputed domain names may divert consumers from Complainant’s website to the websites of Respondent. Therefore, the Panel holds that Respondent has registered and is using the <truebloodwatchfree.info>, <truebloodseason4.org>, <www-cnn.com>, <newscnn.com>, <ben10games.com>, <tbskids.org>, <legobatman.com>, <batman-slotmachine.com>, and <gameofthrones.com> domain names to disrupt Complainant’s business, showing bad faith use and registration pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Fourthly, Complainant contends that Respondent is using the <truebloodwatchfree.info>, <truebloodseason4.org>, <www-cnn.com>, <newscnn.com>, <ben10games.com>, <tbskids.org>, <legobatman.com>, <batman-slotmachine.com>, and <gameofthrones.com> domain names with commercial websites that include commercial links to third-party sites that sell services that compete with Complainant. The Panel observes that Respondent’s disputed domain names either contain links that compete with Complainant’s business with titles such as “$THE WALKING DEAD SEASONS,” “Watch TV Episodes Online,” “FULL TV EPISODES,” or to link to a website that provides services that compete with Complainant’s services. See Complainant’s Annex G. Complainant argues that Respondent’s commercial use of the domain names is likely to confuse and mislead consumers. As the Panel finds that Respondent is using the <truebloodwatchfree.info>, <truebloodseason4.org>, <www-cnn.com>, <newscnn.com>, <ben10games.com>, <tbskids.org>, <legobatman.com>, <batman-slotmachine.com>, and <gameofthrones.com> domain names to provide competing links or services, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Fifthly, Complainant claims that Respondent is deemed at least to have had constructive knowledge of Complainant’s rights in its registered marks by virtue of the federal trademark registrations. While panels have generally held that constructive knowledge of a mark (or marks) is not enough to support a bad faith finding, the Panel finds that, due to the fame of Complainant's marks, Respondent had actual knowledge of the marks and Complainant's rights in the marks. Consequently, the Panel holds that Respondent registered the <truebloodwatchfree.info>, <truebloodseason4.org>, <www-cnn.com>, <newscnn.com>, <ben10games.com>, <tbskids.org>, <legobatman.com>, <batman-slotmachine.com>, and <gameofthrones.com> domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
Finally, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain names using Complainant’s various marks particularized above and in view of the conduct that Respondent has engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <truebloodwatchfree.info>, <truebloodseason4.org>, <www-cnn.com>, <newscnn.com>, <ben10games.com>, <tbskids.org>, <legobatman.com>, <batman-slotmachine.com>, <gameofthrones.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 3, 2014
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