DECISION

 

Warner Media, LLC v. Carlos Gutierrez / Time

Claim Number: FA1807001799535

 

PARTIES

Complainant is Warner Media, LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA.  Respondent is Carlos Gutierrez / Time (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue <timewarner.com.co>, registered with CLICK PANDA SAS.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 31, 2018; the Forum received payment on July 31, 2018.

 

On August 8, 2018, CLICK PANDA SAS confirmed by e-mail to the Forum that the <timewarner.com.co> domain name is registered with CLICK PANDA SAS and that Respondent is the current registrant of the name.  CLICK PANDA SAS has verified that Respondent is bound by the CLICK PANDA SAS 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 August 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@timewarner.com.co.  Also on August 16, 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 September 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

Preliminary Issue: Language of Proceeding

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language.  After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant owns and operates a broadcasting company that provides broadcasting, media, and entertainments services in connection with the TIME WARNER mark. Complainant has rights in the TIME WARNER mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,816,474, registered Jan. 11, 1994). See Compl. Ex. D. Respondent’s  <timewarner.com.co> domain name is confusingly similar to Complainant’s TIME WARNER mark as Respondent merely adds the generic term “.com” and a “.co” country code top-level domain (“ccTLD”).

2.    Respondent has no rights or legitimate interests in the <timewarner.com.co> domain name. Respondent is not licensed or authorized to use Complainant’s TIME WARNER mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name currently resolves to an inactive website. Further, Respondent is using an email address to pass off as Complainant in furtherance of a phishing scheme.

3.    Respondent registered and uses the <timewarner.com.co> domain name in bad faith. Respondent attempts to pass off as Complainant via emails in furtherance of a phishing scheme. Further, Respondent fails to actively use the disputed domain name. Finally, Respondent had actual knowledge of Complainants’ rights in the TIME WARNER mark prior to registering the disputed domain name. 

 

B.   Respondent

1.    Respondent failed to submit a response.

 

FINDINGS

1.    Respondent’s <timewarner.com.co> domain name is confusingly similar to Complainant’s TIME WARNER mark.

2.    Respondent does not have any rights or legitimate interests in the <timewarner.com.co> domain name.

3.    Respondent registered or used the <timewarner.com.co> domain name in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims to have rights in the TIME WARNER mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides copies of its USPTO registrations for the TIME WARNER mark (e.g., Reg. No. 1,816,474, registered Jan. 11, 1994). See Compl. Ex. D. Therefore, the Panel finds Complainant has sufficiently demonstrated its rights in the mark per Policy ¶ 4(a)(i).

 

Next, Complainant contends Respondent’s <timewarner.com.co> domain name is confusingly similar to Complainant’s TIME WARNER. Specifically, Complainant argues Respondent merely adds a generic term and ccTLD to the mark. Adding a generic term and/or ccTLD to a complainant’s mark may not sufficiently mitigate any confusing similarity between the disputed domain name and mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Thomson Reuters Global Resources v Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”). Complainant argues Respondent adds the term “.com” and a “.co” ccTLD to the TIME WARNER mark. Consequently, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 asserts Respondent has no rights or legitimate interests in the <timewarner.com.co> domain name. Specifically, Complainant contends Respondent is not authorized or licensed to use Complainant’s TIME WARNER mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a complainant’s mark may support a finding that a respondent is not commonly known by 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). Complainant provides WHOIS information for the disputed domain name which identifies Respondent as “Time,” and there is no evidence in the record to suggest Respondent is authorized to use Complainant’s mark. See Compl. Ex. A. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Additionally, Complainant alleges Respondent fails to use the <timewarner.com.co> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant contends Respondent is using an email address to pass off as Complainant in furtherance of phishing. Use of an email address associated with the disputed domain name to pass off as a complainant for phishing may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”). Complainant claims Respondent is using the hr@timwarner.com.co and contact@timewarner.com.co email addresses in connection with the phishing scam. Complainant also provides two, public complaints from users who were targeted from Respondent’s phishing scheme. See Compl. Ex. F. Further, one of these complaints asserts Respondent was going by the name “Carlos Gutierrez,” who is a former board member for Complainant. See Compl. Ex. G. Therefore, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).

 

Furthermore, Complainant claims Respondent’s <timewarner.com.co> domain name currently resolves to an inactive website. Failure to make active use of a disputed domain name may demonstrate a lack of rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). The Panel notes Complainant fails to provide any screenshots of the disputed domain name’s resolving website. As such, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant is not required to make any Policy ¶ 4(b) arguments. Rather these arguments are merely illustrative not exclusive for a finding of bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel therefore considers Complainant’s Policy ¶ 4(a)(iii) arguments to support bad faith.

 

Complainant alleges that Respondent registered and uses the <timewarner.com.co> domain name in bad faith. Specifically, Complainant claims Respondent is attempting to pass off as Complainant as part of a phishing scheme. Use of emails to pass off as a complainant to obtain users’ sensitive information may be evidence of bad faith under Policy ¶ 4(a)(iii). See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process). Complainant provides two, public complaints from users who were targeted from Respondent’s purported phishing scheme. See Compl. Ex. F. One of these complaints asserts Respondent addressed email signatures with the name “Carlos Gutierrez,” who was board member for Complainant’s business. See Compl. Ex. G. As such, the Panel finds Respondent’s attempts to pass off demonstrates bad faith per Policy ¶ 4(a)(iii).

 

Moreover, Complainant contends Respondent’s failure to actively use the <timewarner.com.co> domain name. Failure to actively use a disputed domain name may support a finding of bad faith under Policy ¶ 4(a)(iii). See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”). Complainant fails to provide any evidence to support its contention that Respondent fails to use the disputed domain name. Therefore, the Panel determines Respondent failed to actively use the disputed domain name, thus supporting bad faith per Policy ¶ 4(a)(iii).

 

Finally, Complainant claims that in light of the fame and Respondent’s use of Complainant's TIME WARNER mark, it is inconceivable that Respondent could have registered the <timewarner.com.co> domain name without actual knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further asserts that use of the TIME WARNER mark twenty-six (26) years prior to Respondent’s registrations of the disputed domain name indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <timewarner.com.co> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  September 20, 2018