The Complainant is Warner Bros. Entertainment Inc. of California, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“US”).
The Respondent is Pablo Chiappetti of Buenos Aires, Argentina.
The disputed domain names <miraarrow.com>, <mirafriendsonline.com>, <mirapersonofinterest.com>, <mirathebigbangtheory.com>, <mirathefollowing.com> and <miratwoandahalfmen.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2013. On August 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names listing only Domains by Proxy, LLC as the Respondent. On August 26, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Center’s request for registrar verification. The Center sent an email communication to the Complainant on August 27, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to the notification by the Center, on the same date, the Complainant reiterated that Pablo Chiappetti was already listed as a party to this dispute in the Complaint filed on August 23, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2013.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on September 30, 2013. 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.
The proceedings are conducted in English as this is the language of the registration agreement for each of the disputed domain names.
The Complainant is an American producer of highly popular television shows that are syndicated and broadcast around the world, including the six shows that are the subject of this Complaint, namely Arrow, Friends, Person of Interest, The Big Bang Theory, The Following, and Two and a Half Men.
The Complainant holds US trademark registrations and/or common law trademark rights in the title of each of the above shows, as well as copyright interests in all episodes of each of the television series in point.
The Respondent registered the domain names <miratwoandahalfmen.com> and <mirathebigbangtheory.com> on April 17, 2010; <mirafriendsonline.com> on May 31, 2010; <mirapersonofinterest.com> on February 15, 2012; <miraarrow.com> on October 21, 2012; and <mirathefollowing.com> on January 21, 2013. The websites associated with each of the disputed domain names have featured since registration episodes of the Complainant’s corresponding television shows for download or streaming, accompanied with short introductions in Spanish.
The Complainant’s factual and legal contentions can be summarized as follows:
i. Nearly all of the disputed domain names were registered after the initial broadcast of the television show referenced in the corresponding domain name;
ii. The disputed domain name <mirathefollowing.com> was registered on the same date that the first episode of The Following premiered in the United States on January 21, 2013, but long after the show had received significant coverage in the press and online;
iii. Each of the domain names is used for a website whose entire content refers specifically to the Complainant’s programs;
iv. Prior to the registration of the disputed domain names <miraarrow.com>, <mirapersonofinterest.com>, and <mirathefollowing.com>, the Complainant had already established common law rights in the ARROW, PERSON OF INTEREST, and THE FOLLOWING marks;
v. Each of the disputed domain names incorporates in its entirety the Complainant’s marks preceded by the Spanish word “mira” as well as the “.com” generic top level domain extension, and consequently, each of the disputed domain name is confusingly similar to the Complainant’s corresponding mark;
vi. The Complainant has never authorized the Respondent to utilize any of its marks in order to advertise or promote the Complainant’s goods or services;
vii. Offering unauthorized copies of the Complainant’s products for download or streaming without the Complainant’s permission is not a noncommercial fair use of the disputed domain names;
viii. The fact that the Respondent is using a proxy service for each of the disputed domain name is indicative of bad faith under the Policy;
ix. Given the manner in which each of the disputed domain names has been used, it was inconceivable that the Respondent was unaware of the Complainant’s marks when it registered the disputed domain names;
x. The Respondent registered each of the disputed domain names in order to misappropriate the recognition that the Complainant was creating in its marks and to use that recognition to generate interest in and traffic to its websites for commercial gain;
xi. The Respondent’s use of the disputed domain names to facilitate the illegal downloading and streaming of copyrighted episodes of the Complainant’s television programs constitutes bad faith under the Policy;
xii. The Respondent’s exploitation of the Complainant’s goodwill by creating confusion demonstrates bad faith under paragraph 4.b.iiv of the Policy.
The Respondent did not reply to the Complainant’s contentions.
Before dealing with the substantive issues, the Panel will address a procedural issue regarding the Respondent’s identity. The Complaint named both Domains by Proxy, LLC and Pablo Chiappetti as joint respondents.
Upon removal of the privacy shield, the Registrar’s verification response identified Pablo Chiappetti as the sole registrant of the disputed domain names.
As the panel observed in AFMA, Inc. v. Globemedia, WIPO Case No. D2001-0558, neither the Policy nor the Rules provide expressly for the naming of multiple respondents. Rather, the Rules are explicit that the respondent in a UDRP proceeding is the registrant. In this connection, paragraph 1 of the Rules states: “Respondent means the holder of a domain-name registration against which a complaint is initiated.”. There is no provision for naming any third parties as additional respondents.
Accordingly, the Panel finds that Pablo Chiappetti is the proper Respondent in this proceeding.
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
i. the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
iii. the disputed domain names were registered and are being used in bad faith.
These elements are discussed below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
As summarized in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between a complainant’s trademark and the alphanumeric string encompassing the domain name in question, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
The Complainant proves to hold registered and/or unregistered trademark rights over the terms “arrow”, “friends”, “person of interest”, the big bang theory”, “the following”, and “two and a half men”, in the United States of America.
The Panel notes that the Complainant’s marks are entirely incorporated into the disputed domain names, therefore warranting a finding of confusing similarity. See Verizon Trademark Services LLC v. The Helard Group, WIPO Case No. D2012-0277 (several UDRP panels have held that incorporating a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to complainant’s mark).
The inclusion of “mira”, which is the Spanish word for “watch”, and “online”, only reinforces the connection between the disputed domain names and the Complainant’s marks since Internet users can intuitively make a mental association between each disputed domain name and the Complainant’s television show identified by a corresponding trademark.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s marks.
The Complainant has thus satisfied the first requirement of paragraph 4(a) of the Policy.
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate the respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii):
i. before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain names. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant needs to put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Complainant avers to have never licensed or authorized the Respondent to apply for any domain name incorporating its common law and/or registered marks ARROW, FRIENDS, PERSON OF INTEREST, THE BIG BANG THEORY, THE FOLLOWING, and TWO AND A HALF MEN.
Likewise, the Complainant submits that the Respondent is not known by any of the disputed domain names, nor does the Respondent offer any bona fide goods or services under any of the disputed domain names.
In the absence of a Response, this Panel may draw appropriate inferences from the Respondent’s default. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
The Panel has taken notice that each disputed domain name resolves to a website featuring a Complainant’s TV show by the same title of the corresponding domain name, for download or streaming.
This use of the disputed domain name cannot be characterized as bona fide within the meaning of paragraph 4(c)(i) of the Policy, nor does it constitute a legitimate noncommercial or fair use within the purview of paragraph 4(c)(iii) of the Policy because the online posting and streaming of the Complainant’s television shows may well infringe the exclusive rights of the Complainant as the owner of the copyrighted audiovisual works, namely those of reproduction, distribution, and public performance, as provided in sections 101 and 106 of the US Copyright Act, to the extent that the Respondent’s website is accessible in and from the United States of America. See also article 8 of the WIPO Copyright Treaty1, providing that “authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.”
As a result, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy.
Paragraph 4(a)(iii) of the Policy requires a complainant to prove that the domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
First, the Complainant alleges that given the manner in which each of the disputed domain names has been used, the Respondent was clearly aware of the Complainant’s marks prior to the registration of the disputed domain names.
Second, the Complainant contends that the Respondent registered each of the disputed domain names in order to misappropriate the recognition that the Complainant was creating in its marks and to use that recognition to generate interest in and traffic to its websites for commercial gain.
Third, the Complainant submits that the Respondent’s use of the disputed domain names to facilitate the illegal downloading and streaming of copyrighted episodes of the Complainant’s television programs constitutes bad faith under the Policy.
Given the widespread dissemination of the Complainant’s television shows, which have been broadcast around the world, and the suspicious timing in which each of the disputed domain names was created, the Panel infers that the Respondent registered the disputed domain names to profit from the goodwill that the Complainant was building up in its branded television shows, which behavior in and of itself evidences bad faith registration under the Policy.
Moreover, the Panel concurs with the Complainant in that the current use of the disputed domain names to stream episodes of the Complainant’s television shows without the express authorization of the Complainant constitutes bad faith use as per the Policy. See Franck-Kosmos Verlags-GmbH v. CINIPAC IBC, WIPO Case No. D2012-1659 (the respondent obtained the domain name for the purpose of making available pirated versions of cover art and audio content from the corresponding website. The panel therefore holds that the domain name was registered and has been used in bad faith.)
In the circumstances, the Panel finds that the disputed domain names were both registered and are being used in bad faith within the meaning of the Policy.
The Complainant has therefore sustained its burden in connection with paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <miraarrow.com>, <mirafriendsonline.com>, <mirapersonofinterest.com>, <mirathebigbangtheory.com>, <mirathefollowing.com> and <miratwoandahalfmen.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: October 14, 2013
1 Adopted in Geneva on December 20, 1996, to which both the United States of America (the Complainant’s country of origin) and Argentina (the Respondent’s country of record), are contracting States.