Home Box Office, Inc. v. WHOIS PRIVADO / hbo-gratis.com
Claim Number: FA1801001769459
Complainant is Home Box Office, Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is WHOIS PRIVADO / hbo-gratis.com (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hbo-gratis.com>, registered with Arsys Internet, S.L. dba NICLINE.COM.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2018; the Forum received payment on January 29, 2018. The Complaint was received in both Spanish and English.
On February 7, 2018, Arsys Internet, S.L. dba NICLINE.COM confirmed by e-mail to the Forum that the <hbo-gratis.com> domain name is registered with Arsys Internet, S.L. dba NICLINE.COM and that Respondent is the current registrant of the name. Arsys Internet, S.L. dba NICLINE.COM has verified that Respondent is bound by the Arsys Internet, S.L. dba NICLINE.COM 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 February 13, 2018, the Forum served the Spanish language Complaint and all Annexes, including a Spanish language Written Notice of the Complaint, setting a deadline of March 5, 2018 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@hbo-gratis.com. Also on February 13, 2018, the Spanish language 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 March 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, Home Box Office, Inc., uses the HBO mark to provide and market its various broadcasting, media and entertainment services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,149,147 registered Apr. 7, 1998.) See Compl. Ex. D. Respondent’s <hbo-gratis.com> domain name is confusingly similar the HBO mark, as it contains Complainant’s mark in its entirety, merely adding a hyphen, the descriptive term “gratis”—which means “free” in Spanish—and the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <hbo-gratis.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the HBO mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the disputed domain name to trade on the goodwill associated with Complainant’s HBO mark for an illegal phishing scheme. In addition, Respondent uses the <hbo-gratis.com> domain name to redirect users to Respondent’s website that directly competes with Complainant’s business.
Respondent has registered and used the <hbo-gratis.com> domain name in bad faith. Respondent is attempting to attract Internet users to its competing website for commercial gain. Additionally, Respondent uses the name to further a phishing scheme. Further, Respondent had actual knowledge of Complainant’s HBO mark prior to registering the <hbo-gratis.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. <hbo-gratis.com> was created on August 27, 2017.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Spanish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The Panel finds that the disputed domain name is confusingly similar with Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 Panel finds that the disputed domain name, <hbo-gratis.com>, is confusingly similar with Complainant’s valid and subsisting trademark, HBO. Complainant has adequately plead it rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely taking Complainant’s mark in its entirety and adding a hyphen and the generic Spanish word for “free” plus the gTLD “.com.” This is inadequate to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no rights, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the disputed domain name to trade on the goodwill associated with Complainant’s HBO mark for an illegal phishing scheme. In addition, Respondent uses the <hbo-gratis.com> domain name to redirect users to Respondent’s website that directly competes with Complainant’s business.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent registered and uses the <hbo-gratis.com> domain name in bad faith because Respondent is intentionally attempting to attract for commercial gain Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s HBO marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Using a confusingly similar domain name to mislead users and redirect them to a competing website can indicate the respondent registered and used the name in bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant contentends that Respondent uses the <hbo-gratis.com> domain name to divert potential customers of Complainant’s business to the competitive “Cinematrix” website by capitalizing on mistaken or confused Internet users. See Compl. Exs. F–G. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iii) and/or (iv).
Complainant also contends that Respondent’s phishing behavior is indicative of its bad faith registration and use of the <hbo-gratis.com> domain name. Use of a domain name in furtherance of a phishing scheme can indicate the name was registered and used in bad faith per Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant contends that the domain name diverts Internet users to the “Cinematrix” website, where they must enter information and create a profile to watch internet video. See Compl. Exs. F–G. The Panel finds, therefore, that Respondent registered and used the <hbo-gratis.com> domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark and rights therein. Given the fame of the HBO mark and the totality of the circumstances, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s prior rights and interests in and to the trademark HBO.
As such, the Panel finds that Respondent engaged in bad faith use and registration of 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 <hbo-gratis.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: March 12, 2018
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