Warner Media, LLC v. Shen Zhong Chao
Claim Number: FA1908001857265
Complainant is Warner Media, LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, New York, USA. Respondent is Shen Zhong Chao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <warnermediaentertainment.com> (‘the Domain Name’), registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2019; the Forum received payment on August 14, 2019.
On August 15, 2019, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <warnermediaentertainment.com> domain name is/are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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@warnermediaentertainment.com. Also on August 20, 2019, 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 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
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.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is successor in interest to Time Warner Inc. and is the owner of rights in the mark WARNER MEDIA that has been used by it since 2018 and has gained secondary meaning through use since then.
The Domain Name is confusingly similar to the Complainant’s mark using it in its entirety and adding only the generic term ‘entertainment’ and the gTLD “.com” which do not prevent such confusing similarity.
Days before the Respondent registered the Domain Name the Complainant announced a business reorganization with a new business unit Warner Media Entertainment.
The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and has not been authorized by the Complainant.
The Domain Name is currently inactive, it has previously been pointed to a page offering the domain for sale and the Respondent offered the name for sale to the Complainant for $800 USD, which is indicative of a lack of rights or legitimate interests in itself. There is no bona fide offering of goods or services or a noncommercial legitimate or fair use.
Offering a Domain Name containing the trademark of another for a sum in excess of out of pocket expenses for registration of the name is bad faith under the Policy.
Respondent is a serial cybersquatter and has been the subject of 11 adverse decisions under the UDRP for bad faith registration and use showing a pattern of conduct.
The Domain Name is being passively held which can be an indication of bad faith.
The timing of the registration days after the announcement of the Complainant’s Warner Media Entertainment business suit shows actual knowledge of the Complainant and its rights by the Respondent and bad faith on the Respondent’s part.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is successor in interest to Time Warner Inc. and is the owner of rights in the mark WARNER MEDIA that has been used by it since 2018 and has gained secondary meaning through use since then.
The Domain Name was registered shortly after the Complainant announced its Warner Media Entertainment business unit. The Domain Name is inactive but has been offered for sale generally and to the Complainant. The Respondent has been the subject of a number of adverse decisions under the UDRP.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant has established common law rights in the WARNER MEDIA mark through its widespread and continuous use of the mark. Common law rights in a mark may be found where a complainant has provided sufficient evidence to show that the mark has acquired secondary meaning. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018). Complainant provides evidence regarding use of its Complainant’s WARNER MEDIA mark and cites two prior UDRP cases in which the Panelist found Complainant to have common law rights in the mark. See Warner Media, LLC v. Warner, FA 1842681 (Forum June 26, 2019) (finding that Complainant established common law rights to its WARNER MEDIA mark due to the secondary meaning of that mark); see also Warner Media, LLC v. Domain Management MIC / Syed Hussain, FA 1822340 (Forum Jan. 30, 2019) (same). Therefore, the Panel finds that the Complainant has sufficiently demonstrated its common law rights in the WARNER MEDIA mark per Policy ¶ 4(a)(i).
The addition of the generic word ‘entertainment’ to the Complainant’s mark does not prevent confusing similarity between the Domain Name and the Complainant’s mark, which is still recognisable in the Domain Name. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i)).
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 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 Respondent has attempted to sell the Domain Name generally on the Internet and to the Complainant for more than the actual cost of the Domain Name. Attempts to sell a disputed domain name for more than out of pocket costs of acquisition of a domain name may be evidence that respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017).
There has been no use of the Domain Name. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum April 20, 2005) (Where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i)).
As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing the Complainant’s mark. The registration of the Domain Name shortly after the announcement of the Complainant’s Warner Media Entertainment business unit shows knowledge on the part of the Respondent of the Complainant and its rights.
Offering a domain name for sale for a sum in excess of out of pocket expenses, as the Respondent has done here, is registration and use in bad faith. See DIRECTTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018).
The Respondent has registered other cybersquatting domain names which contain the marks of third parties and been the subject of a number of adverse UDRP decisions. Bad faith may be established through a pattern of registration and use of domain names. See Stevens v. Modern Ltd. -Cayman Web Dev., FA 250005 (Forum May 17, 2004)
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trademark of another. Passive holding of a domain name containing a mark with a reputation can be bad faith registration and use. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under ¶¶¶ 4(b)(i), (ii) and (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 <warnermediaentertainment.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 11, 2019
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