national arbitration forum

DECISION

Time Warner, Inc. v. Michele Dinoia a/k/a SZK.com

Claim Number:  FA0410000341272

PARTIES

Complainant is Time Warner, Inc. (“Complainant”), represented by James R. Davis of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC, 20036.  Respondent is Michele Dinoia a/k/a SZK.com (“Respondent”), Via Trilussa 11, Pineto, TE, 64025, Italy.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aimexpress.com> and <wwwcnnmoney.com>, registered with Tuonome.it Srl and OnlineNic, Inc, respectively.

PANEL

The undersigned certifies that she has 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 as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically October 14, 2004; the National Arbitration Forum received a hard copy of the Complaint October 18, 2004.

On October 15, 2004, Tuonome.it Srl, and OnlineNic, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <aimexpress.com> and <wwwcnnmoney.com> are registered with Tuonome.it Srl and OnlineNic, Inc., respectively, and that Respondent is the current registrant of the names.  Tuonome.it Srl and OnlineNic, Inc. verified that Respondent is bound by the Tuonome.it Srl and OnlineNic, Inc. registration agreements and thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On October 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 11, 2004, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@aimexpress.com and postmaster@wwwcnnmoney.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On November 19, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name Respondent registered, <aimexpress.com>, is identical to Complainant’s AIMEXPRESS mark, and domain name, <wwwcnnmoney.com>, is confusingly similar to Complainant’s CNN mark.

2. Respondent has no rights to or legitimate interests in the <aimexpress.com> or <wwwcnnmoney.com> domain names.

3. Respondent registered and used the <aimexpress.com> and <wwwcnnmoney.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Time Warner, Inc., established by extrinsic evidence in this proceeding that not only is it a global leader in the media and entertainment industries, it owns the marks used by Respondent to register the disputed domain names.  Complainant registered the AIM mark on Jan. 23, 2001 (Reg. No. 2,423,367), the AIM EXPRESS mark on Dec. 24, 2002 (Reg. No. 2,665,694, filed on June 22, 2001), the CNN mark on May 22, 1990 (Reg. No. 1,597,839), the MONEY mark on Oct. 24, 2000 (Reg. No. 2,398,169), and has a pending registration for the CNNMONEY mark (Ser. No. 76/317,485) with the U.S. Patent and Trademark Office (“USPTO”).

Respondent registered the <aimexpress.com> domain name December 5, 2001, and the <wwwcnnmoney.com> domain name December 3, 2003.  Respondent is using both domain names to lead Internet traffic to a directory service, which lists, inter alia, services that compete with those of Complainant—Internet services, electronic mail services, and Internet connectivity.

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."

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(e), 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.

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.

Identical to and/or Confusingly Similar

Complainant established rights in the marks in issue.  The Panel finds that Complainant has rights in the AIM EXPRESS mark as evidenced by its registration with the USPTO, dating back to the trademark filing date.  See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).  The Panel finds that Complainant has rights in the CNN mark as evidenced by its registration of the CNN mark with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive, and Respondent has the burden of refuting this assumption). 

The Panel finds that the domain name that Respondent registered, <aimexpress.com>, is identical to Complainant’s AIM EXPRESS mark because the only difference in the mark and the domain name is the omission of the space between the words, which does not significantly distinguish the domain name from the mark.  See Croatia Airlines v. Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark); see also Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK).

The Panel finds that the second domain name Respondent registered, <wwwcnnmoney.com>, is confusingly similar to Complainant’s CNN mark because Respondent has only added the word “money,” which does not significantly distinguish the domain name from the mark.  Also, the addition of “www” does not distinguish the domain name from the mark.  Additionally, the Panel finds that Complainant’s pending registration for the CNNMONEY mark strengthens Complainant’s argument that Respondent’s domain name is similar to Complainant’s CNN family of marks.  See Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name  <christiesauction.com> is confusingly similar to Complainant's mark since it merely adds the word "auction" used in its generic sense); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with Complainant’s business); see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established rights to and legitimate interests in the marks contained in their entirety within the disputed domain names.  Complainant alleges that Respondent has no such rights and Respondent has not filed a Response to counter that allegation.  Therefore, the Panel accepts any reasonable assertion by Complainant as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Respondent is appropriating Complainant’s marks to connect Internet traffic to Complainant’s competitors.  The Panel finds that appropriating another’s mark to lead Internet traffic to the mark holder’s competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

Nothing in the record, including the WHOIS domain name registration information, indicates that Respondent is commonly known by the disputed domain names.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith in registering and using two domain names that contain Complainant’s protected marks and without any authority from Complainant permitting such registration and use.  Respondent has not filed a Response to counter this allegation.  The Panel infers that Respondent generates revenues through click-through referral fees and finds that registering domain names that are identical or confusingly similar to Complainant’s marks to create confusion for commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Respondent is appropriating Complainant’s mark to promote Complainant’s competitors.  The Panel finds that Respondent registered the <aimexpress.com> domain name to disrupt Complainant’s business, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and used the domain name primarily for the purpose of disrupting the business of Complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to Complainant’s services under the OPENMAIL mark).

Respondent appropriated Complainant’s CNN mark and added the letters “www” to the <wwwcnnmoney.com> domain name.  The Panel finds that Respondent has appended these letters to capitalize on typing mistakes of Internet users, a practice known as “typosquatting,” and that such conduct evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Black & Decker Corp. v. Azra Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith); see also Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

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 <aimexpress.com> and <wwwcnnmoney.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: December 3, 2004

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