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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Time Warner Entertainment Company, L.P. v. Chris Harper
Case No. D2001-1080
1. The Parties
The Complainant in this administrative proceeding is Time Warner Entertainment Company, L.P., a Delaware limited partnership, having a principal place of business at 75 Rockefeller Plaza, New York, New York 10019, U.S.A.
The Respondent is Chris Harper, an individual, whose postal address is 6335 34 Av. N., St. Petersburg, Florida 33710, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is as follows: <baynewsnine.com>. The domain name was registered with Register.com, Inc. on October 30, 1999.
3. Procedural Background
On August 30, 2001, the WIPO Arbitration and Mediation Center received from Complainant, via e-mail, a Complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules and payment was properly made. The instant Administrative Proceeding was commenced on September 5, 2001.
Respondent filed his Response, via e-mail, with WIPO on September 21, 2001.
The Administrative Panel was appointed on October 12, 2001, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The decision of the Panel was due to WIPO on or before October 26, 2001.
4. Factual Background
Complainant Time Warner is a leading media and entertainment company. Time Warner owns the BAY NEWS 9 Channel, which is the only 24-hour TV news channel in the Tampa Bay, Florida area.
Complainant has continuously used the BAY NEWS 9 mark in connection with the marketing and distribution of the BAY NEWS 9 TV news program since September 1997. Since the launch of the BAY NEWS 9 program, Complainant has spent over $3 million promoting and advertising the BAY NEWS 9 mark.
Time Warner owns U.S. Trademark Registration No. 2,308,941 for the mark BAY NEWS 9, as used in connection with a TV news program. It also owns several Florida state registrations for the BAY NEWS 9 and related marks. See Complaint, Annex 7. Time Warner also owns the domain name <baynews9.com>, at which site Complainant, through a subsidiary, provides content directed to the BAY NEWS 9 news program.
As noted above, Respondent registered the domain name in dispute on October 30, 1999. In June 2001, Complainant learned of the existence of Respondent's <baynewsnine.com> Web site. According to Complainant, upon attempting to enter the Web site, users were confronted with multiple pop-up ad windows directing users to "BubbaTV", a commercial Web site containing pornographic images and adult-oriented content and to <matchmaker.com>, a commercial Web site providing matchmaking services. See Complaint, Annex 9. The home page of the Respondent's site was entitled "BAYNEWSNINE-Courtesy Link-Provided by Christopher Harper.com" with numerous links to Web sites for TV stations, companies, services and sports teams in the Tampa Bay area. On the left hand side of the page, Respondent noted that "[I]f you are trying to find BayNews.9com please use the link below" and provided links to the home page of the Complainant's Web site. See Complaint, Annex 10. On the home page, Respondent also placed click-through banner ads as well as links to other Web sites. At the bottom of the home page, after the multiple links and banner ads, Respondent states in a smaller font that "[t]his site is in no way affiliated nor endorsed by Baynews9 or Time Warner."
In June 2001, Complainant received a couple of e-mail messages from viewers stating that they had mistakenly entered Respondent's site when trying to access Complainant's site. One viewer stated that he was "immediately transferred to in [sic] site inviting me to become a member of what appears to be a soft porn site under the name of `Bubba, the love sponge'." See Complaint, Annex 15.
On June 26, 2001, Complainant's in-house counsel sent a "cease and desist" letter to Respondent, demanding that Respondent transfer the disputed domain name to Complainant. Respondent replied on the same day via e-mail indicating that he had deleted the link to the "BubbaTV" site and stating that while his domain name was not for sale, "[i]f you would like to be more reasonable I can be very easy to get along with." See Complaint, Annex 3.
Following his Response, Respondent substituted the links and references to the Complainant's site with the statement "[I]f you are tying to find BayNews9.com GO AWAY!!!," changed the title of the page to read "baynewsnine.com - This is NOT Baynews9.com - Chris Harper" and added a new banner ad. See Complaint, Annex 16.
On July 17, 2001, Respondent called Complainant's counsel. In an attempt to resolve the matter, Complainant's counsel offered Respondent $500 for the domain name. Respondent indicated, however, that the offer "comes up a little short" and later offered to transfer the domain name for $10,000. See Complaint, Annex 4.
After the telephone conversations, on or about July 19, 2001, Respondent again modified his site. Despite his promise to delete the "BubbaTV" link, the link remained, along with several new pop-up ad windows and banner ads. See Complaint, Annex 17. On or about July 23, 2001, Respondent again modified his site to add the statement that "[t]his Domain name baynewsnine.com is for sale. …To make an offer CLICK HERE" with a link to the e-mail address firstname.lastname@example.org. See Complaint, Annex 18. On or about August 20, 2001, Respondent removed this offer from the site and modified the site's title to read "BAYNEWSNINE.com - Links - Chris Harper." See Complaint, Annex 19.
On or about August 29, 2001, Respondent redirected the <baynewsnine.com> Web site to a commercial Web site entitled "Bubba the Love Sponge" that promotes a Tampa radio station's morning show and offers adult-oriented content and links thereon. See Complaint, Annex 20.
5. Parties' Contentions
Complainant contends that the domain name in issue is confusingly similar, if not virtually identical, to its BAY NEWS 9 mark.
It further argues that Respondent has no legitimate interest in the domain name. In support thereof, Complainant notes that since Respondent resides within the viewing area of the BAY NEWS 9 news program, it is extremely unlikely that he registered the domain name unaware of Complainant's rights in its mark and with an intent to use the domain name in connection with any type of bona fide offering of goods and services.
Further, according to Complainant, Respondent's display of pornographic pop-up windows that open when attempting to access the <baynewsnine.com> Web site and linking and redirecting to porno sites do not establish that Respondent has been using the domain name in connection with a bona fide offering of goods or services.
Complainant also notes that Respondent has never been known by the domain name in dispute, nor has Complainant ever licensed, authorized, contracted, or otherwise permitted Respondent to use the BAY NEWS 9 mark.
In addition, Complainant maintains, there is no evidence that Respondent is making any type of legitimate noncommercial or fair use of the domain name. Rather, Respondent has registered and is using the domain name with intent to profit commercially by diverting Complainant's viewers and tarnishing the BAY NEWS 9 mark. According to Complainant, the presence of numerous pop-up windows and banner ads on the baynewsninecom site clearly shows that Respondent has entered into commercial agreements whereby he benefits financially from visitors who click on the different banner ads and windows on his site. Furthermore, promoting, linking and redirecting to pornographic and adult-oriented Web sites are clearly commercial in nature and cannot be considered a fair use but, rather, a tarnishment of the Complainant's mark.
With respect to the requirement that the domain name be registered and used in "bad faith," Complainant argues that the parties' conversations and communications demonstrate that Respondent registered the domain name for the purpose of selling it in return for valuable consideration significantly in excess of his out-of-pocket expenses.
Complainant also contends that Respondent was clearly aware of the BAY NEWS 9 mark at the time he registered the disputed domain name and that he registered the domain name to prevent Complainant from reflecting the mark in the corresponding domain name. Further, according to Complainant, Respondent has shown a "pattern of conduct" of registering the domain names of others, pointing out that Respondent also registered the domain name <scotty2hotty.com>, which incorporates the name of a professional wrestler.
Finally, Complainant argues that Respondent has intentionally attempted to attract for commercial gain Internet users to the <baynewsnine.com> Web site by suggesting an affiliation or association with Complainant's BAY NEWS 9 services and by trading upon the goodwill associated with the BAY NEWS 9 mark. Furthermore, according to Complainant, Respondent is creating a likelihood of "initial interest" confusion with the BAY NEWS 9 mark as to the source, sponsorship, affiliation and endorsement of his site or of a product or service on his site. Respondent's disclaimer of any affiliation with Complainant is insufficient to dispel any likelihood of confusion, given that it is in small font on the bottom of the home page and that it does not, in any case, dispel initial interest confusion.
In his Response, Respondent contends that, at the time he registered the disputed domain name, he had no knowledge of the BAY NEWS 9 TV news program, which Respondent describes as an "obscure cable only local news station." Respondent indicates that he selected the domain name by picking at random out of a hat sets of three words. Respondent further maintains that he registered the domain name prior to the issuance of the U.S. trademark registration for BAY NEWS 9 and that Complainant's use of the mark commenced only after registration of the disputed domain name.
Respondent further indicates that "on air" personalities from the BAY NEWS 9 show have appeared on the local radio show hosted by "Bubba the Love Sponge" and that his use of the domain name is and always has been for noncommercial purposes, i.e., no goods or services are offered at the <baynewsnine.com> Web site. He further notes that he has not entered into any contracts for monetary gain as a result of advertising or any other manner.
According to Respondent, he offered the domain name for sale only after an unsolicited bid was offered by Complainant and that he later offered to transfer the domain name only for an amount that would reimburse him for his out-of-pocket expenses incurred in connection with the domain name.
Finally, Respondent maintains that, in mid-2000, after learning of the existence of BAY NEWS 9, he placed links to <baynews9.com> as a courtesy to any users who may have been lost and posted a clearly visible and understandable disclaimer stating that there was NO affiliation with BAY NEWS 9 or Time Warner. After being made aware of Complainant's concerns, Respondent immediately removed all links to <baynews9.com> and left the disclaimer in place.
6. Discussion and Findings
The Panel has carefully reviewed the evidence presented and determines that Complainant has met all the requirements set forth in para. 4(a) of the Policy.
The Panel concludes that the domain name in dispute --<baynewsnine.com>-- is confusingly similar to the BAY NEWS 9 mark. The substitution of the word "nine" for the number "9" does not change the overall impression of the domain name in comparison with the BAY NEWS 9 mark. At a minimum, the name and mark would be pronounced identically.
The Panel also determines that, as required by the applicable Policy, Complainant has rights in the BAY NEWS 9 mark, as evidenced by its federal and state registrations as well as by over four (4) years of use and extensive advertising of the mark. Contrary to Respondent's assertion, the evidence does not show that Complainant's first use of the BAY NEWS 9 mark took place after Respondent registered his domain name.
The Panel further concludes that Respondent has no rights or legitimate interests with respect to the domain name. The evidence establishes that Respondent does not offer any goods or services. See Response, paragraphs 10, 19. There also is no evidence that Respondent is commonly known by the domain name. The Panel further declines to find that Respondent is entitled to rely on the "safe harbor" of paragraph 4.c. (iii) of the Policy, given the evidence that the domain name relates to a Web site with links to pornographic or adult-oriented material. Such material would clearly tarnish Complainant's mark. See MarchNet plc v. MAC Trading, WIPO Case No. D2000-0205 (May 11, 2000).
With respect to the issue of "bad faith" registration and use, the Panel determines that the evidence establishes that Respondent registered the domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name and that Respondent engaged in a pattern of such conduct, within the meaning of paragraph 4.b.(iii) of the Policy. The evidence indicates that, in addition to registering the domain name in dispute, Respondent also registered a domain name corresponding to the name of professional wrestler Scotty2Hottie.
The Panel further concludes, based on an evaluation of the totality of circumstances, that Respondent registered the domain name "primarily" for the purpose of selling it to Complainant for consideration in excess of documented out-of-pocket costs directly related to the domain name, within the meaning of paragraph 4.b.(i) of the Policy. Though it is true, as Respondent notes, that no offer to sell preceded Complainant's offer to buy for $500, it is also clear, contrary to Respondent's assertion, that the amount requested for transfer of the domain name -- $10,000 -- is far in excess of Respondent's out-of-pocket costs directly related to the domain name. The Panel also notes that Respondent, at least for a brief period of time, included a statement on his Web site indicating that the domain name was for sale and inviting offers.
The Panel rejects Respondent's contention that he registered the domain name in good faith without knowledge of the BAY NEWS 9 TV program. Given that Respondent lives in the BAY NEWS 9 TV viewing area, it strains credulity to believe that he was not aware of Complainant's program at the time he registered the domain name, some two years after the show first aired. Respondent's assertion that the domain name was chosen by picking sets of three words out of a hat, each of which is related to the Tampa Bay/St.Petersburg area, is also difficult to credit. Of the three words selected, only one -- "Bay" -- is related to the area
In view of the above, the Panel grants Complainant's request for transfer to it of the domain name <baynewsnine.com>.
Jeffrey M. Samuels
Dated: October 26, 2001