Complainant is Turner Network Television, Inc. of Atlanta, Georgia, United States of America (“United States” or “U.S.”), represented by Winterfeldt IP Group PLLC, United States.
Respondent is Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot of San Mateo, California, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 13, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 26, 2018.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on June 29, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant was founded in 1988 and owns and operates a well-known cable television network in the United States, known as “TNT.” Between 1991 and the present, Complainant launched its TNT network internationally, reaching audiences in Argentina, Brazil, Chile, Colombia, Mexico, Venezuela and other parts of Latin America and the Caribbean, Germany, Poland, Romania, and Spain.
Complainant owns numerous trademark registrations for the mark TNT (“the TNT Mark”) and TNT with various design elements, and it uses the TNT Mark in combination with other words such as TNT WE KNOW DRAMA, in many jurisdictions throughout the world, including the United States. Its trademark registrations include: U.S. Trademark No. 4,451,067 (registered December 17, 2013). Complainant, either directly or through its parent entity or other affiliated entities, also owns numerous domain names, which include the TNT Mark.
Complainant applied to register a new mark, TNT SUSPENSE COLLECTION, in the United States, on February 7, 2018 on an intent-to-use basis (Ser. No. 87788425). Three days later, on February 10, 2018, Respondent registered the Domain Name .
The Domain Name resolves to a blank page located at the URL “www./?z”. However, the page source code indicates that the page employs an AdBlock key, meaning it is “white listed” from ad blocking software, and it also contains an embedded link for Google AdSense, indicating that the page is enabled for monetization through this platform. In addition, the Domain Name is advertised for sale through the domain name registration data, which refers to the registrant as “Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot.” And it is listed for sale through the Dynadot Marketplace. Although the seller is listed, the link to the seller’s profile page resolves to a blank page. In addition, the Domain Name previously resolved to a website on which the Domain Name was advertised for sale at a listed price of USD 988 through E.
On Aril 20, 2018, Complainant sent correspondence to Dynadot (which serves as Respondent in its capacity as a domain name Proxy Service) via Electronic Mail, requesting that Dynadot disclose the underlying Proxy Service customer’s contact information in accordance with Part 2, Section 10(i) of Dynadot’s Service Agreement. On April 22, 2018, Dynadot responded to Complainant’s request, but declined to disclose its customer’s contact information in connection with the Domain Name.
Sometime after April 30, 2018 (and after the exchange with Dynadot concerning the Domain Name), the content of Respondent’s website changed from the page advertising the Domain Name for sale through E, to its current blank page.
Respondent is the named registrant of numerous other domain names which match or contain other third-party trademarks, including , , and . 5. Parties’ Contentions A. Complainant
Complainant has developed considerable reputation and goodwill in the United States and worldwide and its trademarks are famous and well-known. For example, in 2018, Brandirectory ranked TNT as the 20th most valuable media brand globally.
The Domain Name fully incorporates and is confusingly similar at the second level to the TNT Mark and other TNT-formative marks owned by Complainant and in which Complainant has well-established rights. The only difference between Complainant’s TNT Mark and the Domain Name is the addition of the terms “suspense collection” and the “.com” generic Top-Level Domain (“gTLD”) extension. The Domain Name is identical to Complainant’s TNT SUSPENSE COLLECTION mark, which it applied to register with the U.S. Patent and Trademark Office (“USPTO”) days before Respondent registered the Domain Name. Respondent’s second level domain name is identical to Complainant’s TNT SUSPENSE COLLECTION mark, and is confusingly similar to its existing TNT Mark and TNT-formative marks. This confusion is not obviated by the addition of dictionary terms or a gTLD extension such as “.com.”
Respondent has no rights or legitimate interests in the Domain Name. Respondent has never been authorized by Complainant to use the TNT SUSPENSE COLLECTION or any other TNT-formative marks in any manner, much less as part of the Domain Name. Respondent has no legitimate interests in the Domain Name given that the Domain Name was registered well after Complainant had registered, for example, the TNT Mark and had established extensive goodwill, and days after Complainant applied to register its TNT SUSPENSE COLLECTION mark.
The Domain Name does not reflect Respondent’s common name or organization name, which as provided in WhoIs is “Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot.” The Domain Name resolves to a blank webpage. Although that webpage is blank, the source code reveals embedded AdSense monetization and ad block override capabilities. Thus, the Domain Name is not used in connection with any bona fide sale of goods or services. It also does not constitute a legitimate noncommercial or fair use. Resolution to a blank webpage constitutes passive holding of the Domain Name constituting no bona fide commercial or legitimate noncommercial or fair use. The offering of the Domain Name for sale does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and used the Domain Name in bad faith. The Domain Name is advertised and listed for sale to the general public and it previously resolved to a website on which the Domain Name was advertised for sale at a listed price of USD 988 through E. Given that the Domain Name is confusingly similar to Complainant’s marks, and Respondent lacks any rights or legitimate interest in the Domain Name, its general offering of the Domain Name for sale constitutes evidence of bad faith. Respondent’s registration and use of the Domain Name also constitutes bad faith. Complainant filed an application to register the TNT SUSPENSE COLLECTION mark on February 7, 2018 and Respondent
registered the Domain Name days later on February 10, 2018. Respondent’s registration of the Domain Name has prevented Complainant from reflecting its TNT SUSPENSE COLLECTION mark in a corresponding domain name in the “.com” TLD. Although it is unclear whether the beneficial registrant of the Domain Name is engaging in a pattern of such conduct, the registrant’s proxy service provider and
named Respondent is the named registrant of numerous other domain names which match or contain other third-party trademarks. Accordingly, Respondent’s opportunistic registration of the Domain Name following
Complainant’s TNT SUSPENSE COLLECTION trademark application filing, and its pattern of similar registration of other domain names matching or containing third-party trademarks evidences bad faith.
Furthermore, the Domain Name resolves to a blank webpage with embedded Google AdSense monetization and ad blocking override capability. Thus, although the webpage currently contains no public-facing advertising or pay-per-click links, these embedded capabilities suggest that the page was designed for monetization, and intended to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s marks. The change in website content after Complainant sent a letter to the proxy service provider and registrar, Dynadot, also evidences Respondent’s bad faith. The Domain Name previously resolved to a website advertising the Domain Name for sale at a listed price of USD 988 through E. Shortly after Complainant communicated with Dynadot, the Domain Name no longer resolved to this content, but instead began resolving to a blank page. Changing website content following receipt of a cease and desist or disclosure letter further evidences bad faith. Respondent is ultimately responsible for the content of the website associated with the Domain Name, even if Dynadot, acting as the hosting provider or proxy service provider, performed the change in content on the underlying beneficial registrant’s behalf.
Furthermore, Complainant’s rights in its marks are so well established, and its TNT brand has achieved a level of recognition and fame such that Respondent has no colorable argument that it is unaware of this brand. The clear targeting of Complainant’s new TNT SUSPENSE COLLECTION mark by registering the identical Domain Name mere days after Complainant applied to register this mark with the USPTO further supports this conclusion. The Domain Name is only valuable because of its association with the TNT and TNT SUSPENSE COLLECTION brands. In this context, Respondent’s registration and use of the Domain Name, including its passive holding, evidences bad faith registration and use. Respondent was on notice of Complainant’s referenced marks prior to registering the Domain Name, given the fame of Complainant’s marks, further evidencing Respondent’s bad faith intent in registering and using the Domain Name. Finally, the underlying beneficial registrant’s use of a proxy service to obscure its true identity further evidences bad faith registration and use of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the TNT Mark based on long-standing and worldwide use as well as trademark registrations including U.S. Trademark No. 4,451,067.
The Panel further finds that the Domain Name is confusingly similar to the TNT Mark in which Complainant has rights. Respondent’s use of the phrase “suspense collection” is insufficient to distinguish the Domain Name from the TNT Mark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms…would not prevent a finding of confusing similarity under the first element.”) Furthermore, the addition of the “.com” suffix is insufficient to distinguish the Domain Name from the TNT Mark.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name because Respondent: (1) has never been authorized by Complainant to use the TNT SUSPENSE COLLECTION or any other TNT-formative marks in any manner, much less as part of the Domain Name; and (2) registered the Domain Name well after Complainant had registered, for example, the TNT Mark and had established extensive goodwill, and days after Complainant applied to register its TNT SUSPENSE COLLECTION mark. Also Complainant maintains that the Domain Name does not reflect Respondent’s common name or organization name, which as provided in WhoIs is “Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot.” And the Domain Name resolves to a blank webpage having embedded AdSense monetization and ad block override capabilities. Thus, the Domain Name is not used in connection with any bona fide sale of goods or services. The offering of the Domain Name for sale does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use.
Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Names.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and used the Domain Name in bad faith. Complainant’s long-standing and worldwide rights in the TNT Mark is uncontroverted, as is the fact that Respondent registered the Domain Name long after Complainant established its rights in the TNT Mark and was using them worldwide. Furthermore, Respondent registered the Domain Name on February 10, 2018, only three days after Complainant applied to register TNT SUSPENSE COLLECTION on an intent-to-use basis with the USPTO. Adding the particular phrase “suspense collection” to the registered TNT Mark particularly in view of Complainant’s recently filed trademark application and Complainant’s programming in the suspense arena is a strong indication that Respondent knew of Complainant and its rights in the TNT Mark when it registered the Domain Name. In fact, those terms compound the likelihood of confusion because (1) they are of a similar type, nature and construction to a tag line Complainant uses – “TNT WE KNOW DRAMA”, and (2) Complainant has programming in the suspense arena.
Respondent’s use of the Domain Name also constitutes bad faith under the Policy. The Domain Name resolves to a blank webpage with embedded Google AdSense monetization and ad blocking override capability. Thus, although the webpage currently contains no public-facing advertising or pay-per-click links, these embedded capabilities suggest that the page was designed for monetization, and intended to attract Internet users for commercial gain by creating a likelihood of confusion with the TNT Mark.
There are other indicia of bad faith use here. For example, the Domain Name previously resolved to a website advertising the Domain Name for sale at a listed price of USD 988 through E and shortly after Complainant communicated with Dynadot, the Domain Name no longer resolved to this content, but instead began resolving to a blank page. Respondent’s registration and use of the Domain Name, including its passive holding, evidences bad faith registration and use. Furthermore, the underlying beneficial registrant’s use of a proxy service to obscure its true identity further evidences bad faith registration and use of the Domain Name.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: July 2, 2018
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