Time Warner Inc. v. li jiang
Claim Number: FA1803001775099
Complainant is Time Warner Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie, Colorado, USA. Respondent is li jiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <timewarnerbenefits.co>, registered with Uniregistrar 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2018; the Forum received payment on March 9, 2018.
On March 9, 2018, Uniregistrar Corp confirmed by e-mail to the Forum that the <timewarnerbenefits.co> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar 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 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@timewarnerbenefits.co. Also on March 13, 2018, 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 April 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Time Warner Inc. uses the TIME WARNER mark to provide and market various broadcasting media and entertainment services. Complainant has rights in the TIME WARNER mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,816,474, registered Jan. 11, 1994).
2. Respondent’s <timewarnerbenefits.co>[1] is confusingly similar as it contains Complainant’s TIME WARNER mark in its entirety, merely adding the descriptive term “benefits” along with the generic top-level domain (“gTLD”) “.co.”
3. Respondent does not have rights or legitimate interests in the <timewarnerbenefits.co> domain name. Respondent is not commonly known by the domain name and Complainant has not granted Respondent permission or license to use the TIME WARNER mark for any purpose. Respondent is not using the 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 <timewarnerbenefits.co> domain name to redirect internet users to a website featuring links to third-party websites, some of which directly compete with Complainant's business. In addition, the domain name currently resolves to a website with malicious software in attempt to carry out a phishing scheme. Finally, Respondent has engaged in typosquatting.
4. Respondent has registered and used the <timewarnerbenefits.co> domain name in bad faith. Respondent is attempting to commercially benefit from the domain name by diverting Internet users looking for Complainant and its goods and services and obtaining click-through fees. Further, Respondent has engaged in a phishing scheme to collect users’ personal information. Respondent has also engaged in typosquatting.
5. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TIME WARNER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TIME WARNER mark. Respondent’s domain name is confusingly similar to Complainant’s TIME WARNER mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <timewarnerbenefits.co> domain name and that Respondent registered and uses the domain name in bad faith.
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.”).
Complainant claims rights in the TIME WARNER mark based upon its registration with the USPTO (e.g. Reg. No. 1,816,474, registered Jan. 11, 1994). Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the TIME WARNER mark per Policy ¶ 4(a)(i).
Complainant asserts that the <timewarnerbenefits.co> domain name is confusingly similar to the TIME WARNER mark as it contains the mark in its entirety and adds the descriptive term “benefits” and the gTLD “.co.” Slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark, do not distinguish the domain name from the mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick, FA 1328702 (Forum July 15, 2010) (“The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”). Similarly, the addition of gTLDs is irrelevant in determining whether a disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant that the <timewarnerbenefits.co> domain name does not contain changes that would sufficiently distinguish it from the TIME WARNER mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <timewarnerbenefits.co> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent is not commonly known by the <timewarnerbenefits.co> domain name, nor has Complainant authorized Respondent to use the TIME WARNER mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Li Jiang”. Additionally, the absence of evidence in the record to indicate that Respondent has been authorized to register a domain name using Complainant’s mark supports a finding that Respondent is not commonly known by the <timewarnerbenefits.co> domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <timewarnerbenefits.co> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the domain name is shown by Respondent’s failure to use the name to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the record shows that Respondent previously used the <timewarnerbenefits.co> domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Offering links to products in competition with Complainant shows a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business.).
Further, Complainant has shown that currently Respondent is using a “Spyware” webpage to engage in a phishing scheme. Using a confusingly similar domain name to engage in phishing scheme is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and 4(c)(iii). See Google Inc. v Ryan G Foo / PPA Media Services, FA 1625734 (Forum Aug. 10, 2015) (finding that “use of a disputed domain name to perpetrate a phishing scheme evidences that a respondent lacks rights or legitimate interests in the disputed domain name”). The record supports Complainant’s contention that Respondent uses the Spyware Webpage to engage in a phishing scheme to collect users’ personal and financial information, and that Internet users attempting to access Complainant’s website associated with the TIME WARNER domain name could inadvertently access Respondent’s website, thereby exposing users to a malicious phishing scheme. Respondent’s phishing scheme is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and formerly used the <timewarnerbenefits.co> domain name in bad faith by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the domain name to commercially benefit Respondent by offering hyperlinks to goods or services that compete with Complainant. Using a domain name that incorporates the mark of another to trade upon the goodwill of the other party for commercial gain shows bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant provides screenshots of the prior resolving webpage for the <timewarnerbenefits.co> domain name, which contains links such as “Health Benefits” and “Cable Internet TV.” Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent now uses the domain name in connection with malicious software designed to help further a phishing scheme to collect users’ personal information. Use of Respondent’s domain name for this purpose shows bad faith under Policy ¶ 4(a)(iii). See Google LLC v. Above.com Domain Privacy, FA1753950 (Forum Nov 14, 2017) (Using a confusingly similar domain name to phish for personal or financial information and downloading malware are both evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii)). Complainant provides a screenshot of the warning box which pops up when users attempt to access the resolving webpage, which states “Malicious Spyware/Riskware Detected.” Complainant claims, without contradiction in the record, that Respondent uses this scheme to obtain personal information from unsuspecting users. Based on the evidence in the record, the Panel holds that Respondent’s use of the domain name for malicious purposes is done in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant argues that due to the fame and notoriety of the TIME WARNER mark, Respondent had actual knowledge of Complainant’s rights in the TIME WARNER mark when the domain name was registered. A respondent’s actual knowledge of a mark may be proven through a totality of circumstances surrounding the registration of a domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent had actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant first used its TIME WARNER mark approximately 25 years before Respondent registered the domain name, and the Panel agrees that Complainant’s TIME WARNER mark is well known throughout the world. Therefore, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the TIME WARNER mark when it registered the <timewarnerbenefits.co> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds 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 <timewarnerbenefits.co> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 13, 2018
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