Warner Media, LLC v. Domain Management MIC / Syed Hussain
Claim Number: FA1812001822340
Complainant is Warner Media, LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Domain Management MIC / Syed Hussain (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <warnermedia.group>, registered with Name.com, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically December 21, 2018; the Forum received payment December 21, 2018.
On December 26, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <warnermedia.group> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. verified that Respondent is bound by the Name.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of January 15, 2019, 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@warnermedia.group. Also on December 26, 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 January 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant, Warner Media, LLC, is one of the world’s largest media companies and owns three of the most iconic brands in the entertainment industry. Complainant has common law rights in the WARNER MEDIA mark based upon the establishment of secondary meaning of the mark. Respondent’s <warnermedia.group> domain name is confusingly similar to Complainant’s WARNER MEDIA mark, as the domain name wholly incorporates the mark and adds the “.group” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <warnermedia.group> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the WARNER MEDIA mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the <warnermedia.group> domain name was inactive for months but now currently resolves to a commercial webpage listing a car for sale. Furthermore, Respondent was aware of Complainant’s rights in the mark at the time of registration.
Respondent registered and is using the <warnermedia.group> domain name in bad faith. Respondent engaged in a pattern of bad faith registration by being involved in previous UDRP domain name transfer proceedings. Furthermore, Respondent offers to sell the <warnermedia.group> domain name for an amount in excess of customary out-of-pocket costs. Finally, Respondent is passively holding the disputed domain name.
B. Respondent’s Contentions in this Proceeding:
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the disputed domain name June 15, 2018.
Complainant established rights and legitimate interests in the disputed domain name containing Complainant’s protected mark in its entirety.
Complainant established that Respondent has no such rights or legitimate interests in any domain containing in its entirety Complainant’s protected mark.
Respondent registered a confusingly similar domain name containing in its entirety Complainant’s protected mark and used, held passively and/or offered to sell the domain 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 or Confusingly Similar:
Complainant asserts rights in the WARNER MEDIA mark based upon its establishment of secondary meaning in the mark. Complainant may have common law rights in a mark where the mark has established a secondary meaning under Policy ¶ 4(a)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the MELLO and MELLO SOLAR marks.”). Complainant provides multiple articles to evidence the fame and secondary meaning of the WARNER MEDIA mark. See Compl. Exs. E, H, I, and K. Accordingly, the Panel agrees and finds that Respondent has common law rights in the WARNER MEDIA mark pursuant to a Policy ¶ 4(a)(i) analysis.
Complainant next argues Respondent’s <warnermedia.group> domain name is confusingly similar to the WARNER MEDIA mark, as the name includes the entire mark along with the “.group” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel therefore finds that the <warnermedia.group> domain name is confusingly similar to the WARNER MEDIA mark per Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a confusingly similar domain name including within that disputed domain name, Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden of proof shifts to Respondent to show it does have such 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 <warnermedia.group> domain name, as Respondent is not commonly known by the disputed domain name, and as Complainant has not authorized Respondent to use the WARNER MEDIA mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Syed Hussain / Domain Management MIC,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <warnermedia.group> domain name.
Complainant contends Respondent fails to use the <warnermedia.group> domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Instead, Complainant contends the disputed domain was inactive for months but now currently resolves to a commercial webpage listing a car for sale. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name under Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Additionally, use of a disputed domain name to host an unrelated commercial webpage may not indicate rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) (“unrelated use [of a confusingly similar domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”). Complainant provides screenshots of the webpages associated with the disputed domain name showing both an inactive webpage and a car listing. See Compl. Ex. J. Therefore, the Panel agrees that Respondent lacks rights and legitimate interests in the <warnermedia.group> domain name per Policy ¶¶ 4(c)(i) or (iii)
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in this disputed domain name that utilizes in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends Respondent’s only purpose in registering the <warnermedia.group> domain name was to gain commercially from the sale of the name, indicating its registration and use and/or passive holding of the name in bad faith. A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith under Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Complainant contends that given its longstanding common law rights in the WARNER MEDIA mark, and Respondent’s current use of the domain name to offer to sell the name (see Compl. Ex. O), it is evident Respondent’s purpose for registering and using the domain name was and is to sell the name for a profit and/or to passively hold it for occasional use as a device to attract Internet users for personal commercial gain. The Panel agrees and finds that Respondent registered and used and/or passive held and offered for sale, the <warnermedia.group> domain name in bad faith per Policy ¶ 4(b)(i).
Next, Complainant argues Respondent’s registration of the <warnermedia.group> domain name is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of prior adverse UDRP precedent / the respondent’s registration of other domain names infringing on famous marks, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant includes a list of prior UDRP cases where Respondent, Syed Hussain was ordered to transfer ownership of domain names. See Compl. Ex. M. The Panel therefore finds that the registration and use and/or passive holding and/or sale of the <warnermedia.group> domain name is part of a pattern and is evidence of Respondent’s bad faith pursuant to a Policy ¶ 4(b)(ii) analysis.
Complainant asserts that Respondent’s failure to use the <warnermedia.group> domain name is evidence of its bad faith standing alone. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s contention that the domain name does not resolve to an active website. See Compl. Ex. J. The Panel finds that Respondent’s inactive holding of the domain name is evidence of its bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used and/or passively held and offered to sell the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <warnermedia.group> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 30, 2019
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