Home Box Office, Inc. v. FightLife Studios
Claim Number: FA2305002046369
Complainant is Home Box Office, Inc. (“Complainant”), represented by S. Annie Allison, New York, USA. Respondent is FightLife Studios (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fightlifeonhbomax.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on May 28, 2023; Forum received payment on May 28, 2023.
On May 30, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <fightlifeonhbomax.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 2023 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@fightlifeonhbomax.com. Also on June 5, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant made the following contentions.
Complainant registered the HBO MAX mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 6,201,484, registered Nov. 17, 2020). See Amend. Compl. Ex. 5. Respondent’s <fightlifeonhbomax.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the HBO MAX mark and adds the generic terms “fight,” “life,” and ”on” as well the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <fightlifeonhbomax.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent offers competing services.
Respondent registered and uses the <fightlifeonhbomax.com> domain name in bad faith. Respondent offers competing services. Respondent had actual knowledge of Complainant’s rights in the HBO MAX family of marks prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in communications and entertainment by means of various broadcasting, media, and entertainment services including direct-to-consumer streaming services.
2. Complainant has established its rights in the HBO MAX mark arising from its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 6,201,484, registered Nov. 17, 2020).
3. Respondent registered the <fightlifeonhbomax.com> domain name on November 28, 2022.
4. Respondent has caused the disputed domain name to be used to offer services competing with those of Complainant.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the HBO MAX mark based upon its registration of the mark with the USPTO (e.g. Reg. No. 6,201,484, registered Nov. 17, 2020). See Amend. Compl. Ex. 5. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established its rights in the HBO MAX mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s HBO MAX mark. Complainant argues that Respondent’s <fightlifeonhbomax.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the HBO MAX mark and adds the generic terms “fight,” “life,” and ”on” as well the “.com” gTLD. Similar changes in a registered mark have failed to distinguish a domain name sufficiently from a mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The Panel therefore finds that the <fightlifeonhbomax.com> domain name is confusingly similar to the HBO MAX mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s HBO MAX trademark and to use it in its domain name, adding the generic words “fight,” “life,” and ”on” which cannot negate the identicality between the domain name and the trademark;
(b) Respondent registered the <fightlifeonhbomax.com> domain name on November 28, 2022;
(c) Respondent has caused the disputed domain name to be used to offer to internet users services competing with those of Complainant;
(d) It is particularly significant that the evidence collected by Complainant shows that some internet users thought or assumed that the website was being published under the auspices of HBO MAX and for a project that seems unsavory and of dubious legitimacy;
(e) Respondent has engaged in these activities without the consent or approval of Complainant;
(f) Complainant contends that Respondent has no rights or legitimate interests in the <fightlifeonhbomax.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS identifies “FightLife Studios” as the registrant. See Amend. Compl. Ex. 2A, 2B. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the HBO MAX mark. Panels may use these submissions, if established, as evidence of a registrant’s lacking rights or legitimate interests in a 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 alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <fightlifeonhbomax.com> domain name under Policy ¶ 4(c)(ii);
(g) Complainant argues that Respondent uses the disputed domain name to offer services in direct competition with those of Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant fails to provide a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Here, Complainant provides screenshot evidence of the resolving website for the disputed domain name, which Complainant contends contains descriptions of Respondent’s own alleged competing content services. See Compl. Ex. 8. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <fightlifeonhbomax.com> domain name in bad faith by intercepting internet users seeking Complainant’s services and potentially by commercially benefitting via the offer of competing services. Using a confusingly similar domain name to offer services in direct competition with a complainant for a registrant’s benefit can evince a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Here, Complainant provides screenshot evidence of the resolving website for the resolution of the disputed domain name, which Complainant contends contains descriptions of Respondent’s own alleged competing content services. The Panel agrees. See Compl. Ex. 8. It is particularly significant that the evidence collected by Complainant shows that some internet users thought or assumed that the website was being published under the auspices of HBO MAX and for a project that seems unsavory and of dubious legitimacy. The Panel therefore agrees that Respondent has attempted to benefit commercially from using Complainant’s mark in bad faith for the purposes of Policy ¶ 4(b)(iv).
Thirdly, Complainant submits that Respondent had actual or constructive knowledge of Complainant’s rights in the HBO MAX mark prior to registration of the disputed domain name. Actual knowledge is sufficient for a finding of bad faith per 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.”). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use per Policy ¶ 4(a)(iii). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the HBO MAX mark prior to registration of the disputed domain name based upon the fame of the mark and Complainant’s position in the marketplace for decades, as well as Respondent’s use of the mark to promote competing services. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration of the domain name under Policy ¶ 4(a)(iii).
It should be added that the evidence shows that someone behind the domain name and its use has been dishonestly trading on the Complainant’s good name and pretending that they are in fact HBO MAX and it is also clear that they are doing this to make money. Moreover, the same people are perpetrating a fraud on innocent members of the community, including actors being induced to audition for parts in a project of dubious legitimacy, by pretending that the project is legitimate and under the auspices of HBO MAX when it is neither.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fightlifeonhbomax.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: July 7, 2023
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