Warner Media, LLC v. Domain Admin
Claim Number: FA2001001879004
Complainant is Warner Media, LLC (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Domain Admin (“Respondent”), Costa Rica.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <warnermediagroup.net>(‘the Domain Name’), registered with DropCatch.com 410 LLC.
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 January 15, 2020; the Forum received payment on January 15, 2020.
On January 15, 2020, DropCatch.com 410 LLC confirmed by e-mail to the Forum that the <warnermediagroup.net> domain name is registered with DropCatch.com 410 LLC and that Respondent is the current registrant of the name. DropCatch.com 410 LLC has verified that Respondent is bound by the DropCatch.com 410 LLC 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 January 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2020 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@warnermediagroup.net. Also on January 20, 2020, 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 February 14, 2020 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.
A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is successor in interest to Time Warner Inc. and is the owner of rights in the mark WARNER MEDIA which has been used by it since 2018 and has gained secondary meaning through use for entertainment services since then.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s mark using it in its entirety and adding only the generic term “group” and the gTLD “.net,” which do not prevent such confusing similarity. The Domain Name is highly similar to the Complainant’s official domain name at <Warnermediagroup.com>.
The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and has not been authorised by the Complainant.
The Domain Name has been pointed to various third-party sites including malware and pay-per-click links. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is registration and use in bad faith.
The Domain Name has been offered for sale for a sum in excess of out of pocket registration costs which is bad faith registration and use.
The Respondent has also exhibited a pattern of registering domain names which contain the third party trademarks of media companies and names of public figures.
The Domain Name was registered after the Complainant announced its new media group as WARNER MEDIA. This shows actual knowledge by the Respondent of the Complainant, its rights, business and services.
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 which has been used by it since 2018 and has gained secondary meaning through use for entertainment services since then.
The Domain Name registered in 2019 has been used for third-party sites including pay-per-click links. The Respondent has registered a number of Domain Names containing the marks of third party media companies and public figures. The Domain Name has been offered for sale.
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, 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 “group” 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 “.net” 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 authorised 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. 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).
The Respondent has used the site attached to the Domain Name for links some of which offer competing services not connected with the Complainant. He does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See ALPITOUR SpA v Albloushi FA 888651 (Forum Feb 26, 2007) (rejecting the Respondent's contentions of rights and legitimate interests because the respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy). The use is commercial and so cannot be a legitimate noncommercial fair use.
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.
The Panel notes the allegation of malware, although specifics are not given in evidence.
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 a sign confusingly similar to the Complainant’s mark.
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 is using the Domain Name to profit by linking to third-party web sites in a confusing manner. The Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his websites by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site attached to the Domain Name and businesses on it. See Dovetail Ventures LLC v Klayton Thorpe, FA 1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv) where it used the disputed domain name to host a variety of hyperlinks unrelated to the complainant’s business through which the Respondent presumably gained).
Further it has been held that such use is disruptive under Policy ¶ 4(b)(iii). See Adriana Inc v Moniker Privacy services, FA 1503001610020 (Forum May 1, 2015) (Using pay-per-click links redirecting users to competing web sites to disrupt and compete with a Complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii)).
The Respondent has registered other cybersquatting domain names which contain the marks of third parties and males of public figures. 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).
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 Paras 4(b)(i), (ii), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <warnermediagroup.net> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 15, 2020
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