Home Box Office, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1807001796397
Complainant is Home Box Office, Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hbogocomactivate.com>, registered with Internet Domain Service 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2018; the Forum received payment on July 12, 2018.
On July 13, 2018, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <hbogocomactivate.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service 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 July 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@hbogocomactivate.com. Also on July 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 August 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Home Box Office, Inc., uses the HBO GO 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. 3,788,398, registered May 11, 2010). See Compl. Ex. D. Respondent’s <hbogocomactivate.com> domain name is confusingly similar to the HBO GO mark, as it contains Complainant’s mark in its entirety, merely adding the descriptive terms “com” and “activate” along with the generic top level domain (“gTLD”) “.com.”
ii) Respondent does not have rights or legitimate interests in the <hbogocomactivate.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 GO 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 GO mark for an illegal phishing scheme.
iii) Respondent has registered and used the <hbogocomactivate.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 GO mark prior to registering the <hbogocomactivate.com> domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name <hbogocomactivate.com> was created on April 26, 2017.
2. Complainant established rights in the HBO GO mark based upon its registration with the USPTO (e.g., Reg. No. 3,788,398, registered May 11, 2010.)
3. The website of the disputed domain name advertises technical support services for Complainant’s HBO GO content delivery platform via a toll-free telephone number.
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 HBO GO mark based upon its registration with the USPTO (e.g., Reg. No. 3,788,398, registered May 11, 2010.) See Compl. Ex. D. 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 HBO GO mark per Policy ¶ 4(a)(i).
Complainant asserts that the <hbogocomactivate.com> domain name is confusingly similar to the HBO GO mark as the name contains the mark in its entirety, merely adding the descriptive terms “com” and “activate”, along with the gTLD “.com.” Panels have consistently found that 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 or removal of a letter, do not distinguish the domain name from the mark incorporated therein. See eBay Inc. v. eBay Motors, FA 1731822 (Forum June 26, 2017) (holding that “words like ‘online,’ which pertain to a complainant’s trademark-related activities—fails to sufficiently distinguish domain names from registered marks.”). Similarly, the addition of a gTLD is irrelevant in determining whether the 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 and finds that Respondent’s <hbogocomactivate.com> domain name is confusingly similar to Complainant’s HBO GO mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <hbogocomactivate.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the HBO GO mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed 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 “Domain Admin / Whois Privacy Corp.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed 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 has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <hbogocomactivate.com> domain name is demonstrated by Respondent’s use of the domain name in furtherance of a phishing scheme. Use of a confusingly similar domain name as part a scheme to gain Internet users’ information can demonstrate a respondent’s lack of rights and legitimate interests in the name per Policy ¶ 4(a)(ii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”); see also Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). Respondent’s website advertises technical support services for Complainant’s HBO GO content delivery platform via a toll-free telephone number. See Compl. Ex. F. When users called the number, they were ultimately asked for payment information and charged fees. See Compl. Ex. E (printouts of Complainant’s correspondence with RespOrg). Therefore, the Panel agrees that such a use demonstrates Respondent’s lack of rights and legitimate interests in the <hbogocomactivate.com> domain name per Policy ¶ 4(a)(ii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 name.
Complainant argues that Respondent registered and uses the <hbogocomactivate.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 GO mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Use of a domain name to intentionally create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of a complainant constitutes bad faith per Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Dank, FA 203169 (Forum Dec. 6, 2003) (finding respondent’s use of the disputed domain name for an information theft scam and illegal commercial gain constituted bad faith); see also Regents of the Univ. of Michigan v. VistaPrint Tech. Ltd., FA 1460764 (Forum Oct. 5, 2012) (“The Panel finds that Respondent’s fraudulent attempts to pass itself off as Complainant constitute evidence of bad faith registration and use.”). The Panel recalls Complainant’s contention that Respondent uses the <hbogocomactivate.com> domain name to engage in a phishing scheme by passing itself off as an agent of Complainant to trick consumers to submit payments to Respondent. See Compl. Exs. E–F. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).
Complainant also contends Respondent’s phishing behavior is indicative of its bad faith registration and use of the <hbogocomactivate.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).”). The Panel recalls Complainant’s contention that the domain name tricks Complainant’s customers to submit payments to Respondent in exchange for technical support services. See Compl. Exs. E–F. The Panel determines, therefore, that Respondent registered and used the <hbogocomactivate.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. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA 1591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has 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 asserts that Respondent’s reference of Complainant’s mark and services demonstrates that Respondent had actual knowledge of Complainant’s rights in the HBO GO mark prior to registering the <hbogocomactivate.com> domain name. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s rights in the HBO GO mark when it registered the <hbogocomactivate.com> domain name, thereby supporting a finding of bad faith under 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 <hbogocomactivate.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 8, 2018
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