WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Time Warner Inc. and EMI Group plc v. CPIC Net

Case No. D2000-0433

 

1. The Parties

Complainants are Time Warner Inc. a Delaware corporation with its principal place of business in New York, New York USA ("Time Warner") and EMI Group plc a United Kingdom corporation with its principal place of business in London, England ("EMI") (collectively "Complainants").

Time Warner and EMI have publicly announced their intention to merge their business operations into a single corporate entity to be called Warner EMI Music. The Complainants assert that each has sufficient common interest in the domain names because the domain names incorporate each of the Complainantsí corporate names as well as the name of the merged company.

Respondent is CPIC Net located at 15 5th Street, Closter, NJ 07624 USA.

 

2. The Domain Name(s) and Registrar(s)

The domain names at issue are:

"emiwarnermusic.com"
"emiwarner.org"
"emiwarner.net"
"warneremi.net"
"warneremi.org".

The disputed domain names are collectively referred to as the Domain Names.

The registrar for the Domain Names is Register.com located at 575 Eight Avenue, 11th Floor, New York, New York 10018, USA.

 

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainants on May 15, 2000, in hardcopy and on May 18, 2000, by email. The Complainants paid the required fee.

On May 18, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainants.

On May 25, 2000, the Center sent to the Registrar a request for verification of registration data. On June 2, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that the Domain Names are registered in the Respondent's name.

On June 4, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). On the same day a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

The formal date of the commencement of this administrative proceeding is June 4, 2000. The date by which Respondent was to file its response was June 23, 2000.

On June 27, 2000, the Center sent Notification of Respondentís Default. No Response has been received.

On July 7, 2000, the Center received an email request from Complainants that a single member panel be designated instead of a three member panel.

The Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Sole Panelist") and sent notification of the appointment of a single member panel consisting of the Sole Panelist.

 

 

4. Factual Background

Time Warner is the worldís leading entertainment and media company. Time Warner does business worldwide in the entertainment and media industries. Its products and services include the creation and worldwide distribution of sound recordings, television properties, motion pictures, online entertainment properties and publishing properties. Time Warnerís properties are among the most famous and successful in the world.

Among Time Warnerís most important assets are its world renowned intellectual property assets, including its trademarks. Time Warner earns billions of dollars in connection with these trademarks. As a result of the worldwide success of its properties, the TIME WARNER and WARNER BROS. marks are among the most famous in the world.

Time Warner, and its related companies Warner Bros. Records Inc. and Warner/Chappell Music Inc., are the owners of numerous U.S. and International registrations for the TIME WARNER, WARNER BROS. and other WARNER marks, collectively referred to as the "TIME WARNER Marks," including the following:

Warner Bros. WB. Registration No: 0680457, Registration Date: 06/16/1959, International Class No. 9, phonograph records and tapes with sound recorded thereon.

WB Warner Bros. Pictures, Inc. Registration No. 0391866, Registration Date: 11/25/1941, International Class No. 9, motion pictures and motion picture films, which have records of sound, words and/or music thereon, and motion picture films adapted for synchronization with sound, words and/or music records; synchronized apparatus for simultaneously reproducing coordinated light and sound effects and the component parts of such apparatus.

Warner Bros. Registration No. 1026466, Registration Date: 12/02/1975, International Class No. 41, providing film and tape entertainment for viewing through the media of television and cinema.

WB Warner Bros. Registration No. 1969829, Registration Date: 04/23/1996, International Class No. 9, motion picture and television films featuring action, adventure, animation, comedy, drama, or music; prerecorded goods, namely prerecorded records and prerecorded audio and audio-video tapes, cassettes and discs featuring action, adventure, animation, comedy, drama, or music; film clips featuring action, adventure, animation, comedy, drama, or music within cassettes used with hand-held viewers or projectors; audio, video, audio and video tape, cassette, disc playback and recorders.

Warner Chappell Registration No. 1985376, Registration Date: 7/09/1996, International Class No. 16, sheet music and books featuring music and information relating to music and the music industry.

Warner Alliance Registration No. 1713161, Registration Date: 9/08/92, International Class No. 9, pre-recorded phonograph records and pre-recorded audio and audio-video tapes, cassettes and compact discs featuring entertainment.

Warner Home Video Registration No. 1228267, Registration Date: 2/22/1983, International Class No. 9, Video Cassettes.

WK Warner Kids Registration No. 2268793, Registration Date: 8/10/99, International Class 25, clothing for men, women, and children, namely, shirts, t-shirts, sweatshirts, jogging suits, trousers, jeans, shorts, tank tops, rainwear, cloth bibs, blouses, dresses, suspenders, sweaters, jackets, coats, raincoats, snow suits, ties, robes, hats, caps, sunvisors, belts, scarves, sleepwear, pajamas, lingerie, underwear, boots, shoes, sneakers sandals, booties, slipper socks, swimwear, and masquerade and Halloween costumes comprised of bodysuits and face mask.

Time Warner Registration No. 1816474, Registration Date: 01/11/1994, International Class No. 38, cable television broadcasting services.

Time Warner Registration No. 1940977, Registration Date: 12/12/1995, International Class No. 9, prerecorded audiocassette tapes featuring the arts, literature, lifestyles, fitness, business, music and topics of general interest.

Time Warner Audio Books Registration No. 1931702, Registration Date: 10/31/1995, International Class No.9, prerecorded audio cassette tapes and compact discs and printed material packaged therewith featuring the arts, literature, lifestyles, fitness, business and topics of general interest.

EMI is a public company quoted on the London Stock Exchange and is one of the worldís leading music companies. Its activities include the creation and worldwide distribution of sound recordings and music publishing properties. Its properties are amongst the best known in the world. EMIís trademarks form an important part of its global intellectual property rights. EMI has been in the business of creating and exploiting intellectual property assets in relation to sound recordings and musical works for over 100 years.

EMI is the owner of numerous U.S. and International registrations of the EMI mark, collectively referred to as the "EMI Marks," including:

EMI Registration No. 0952689, Registration Date: 02/06/1973, International Class No. 9, grooved phonograph records and prerecorded tapes

EMI America Registration No. 1148797, Registration Date: 03/24/1981, International Class No. 9, phonograph records

EMI Registration No. 1776306, Registration Date: 06/15/1993, International Class No. 9, prerecorded audio cassettes featuring musical performance

EMI Registration No. 1850213, Registration Date: 08/16/1994, International Class No. 9, blank and prerecorded audio and video discs, records and tapes, prerecorded audio discs and tapes on a variety of subject matter

EMI Registration No. 1874518, Registration Date: 01/17/1995, International Class No. 9, blank video cassette tapes

EMI Registration No. 2158294, Registration Date: 05/19/1998, International Class No. 9, musical sound recordings; audio and/or video recordings featuring music and musical entertainment and spoken word segments related to music and musical entertainment

EMI Serial No. 75-065488, Filing Date: 02/26/1996, International Class No. 35, administration, exploitation and granting of rights for production of musical and/or lyrical works; acquisition, management and exploitation of copyrights in musical and/or lyrical works for and on behalf of authors, composers or conducts of such works, International Class No. 16, printed matter, namely books, magazines, brochures, sheet music, newsletters relating to the music/entertainment industry, printed tickets, gift cards, Christmas cards, occasion cards, playing cards, trivia cards, trading cards, mounted and unmounted photographs, posters and stationary, stickers; gift vouchers and coupon books for sound/video recordings; printed booklets in the field of music to be inserted in cassettes and compact discs, International Class No. 41, music publishing services; entertainment services, namely, developing, organizing and production of radio shows; television shows, concerts, films, sound and video recordings, all relating to music.

Beginning as early as the summer of 1999, Time Warner and EMI engaged in negotiations of a merger between the two companies. The merger was officially announced by Time Warner and EMI in London, on January 24, 2000. The merger of these companies created one of the worldís largest music distribution and record companies, to be called Warner EMI Music. Due to the significance of the event for the media and entertainment industries and the impact it was anticipated to have on the distribution of music over the Internet, the merger was reported by print, broadcast and online press around the world. Citing sources inside the companies, a number of news services published articles about the pending merger prior to January 24, 2000. The Sunday Telegraph, a London-based newspaper, reported the event in its columns on January 23. The online news service CNN.com reported the merger in the United States on January 22, 2000, citing The Sunday Telegraph article. The merger was further reported on January 23, 2000, by numerous other news organizations, including notably the New York Post and the Los Angeles Times.

On January 24, 2000, representatives of EMI and Time Warner attempted to register several domain names that reflected their association and common law mark for use in conjunction with a web site promoting and distributing their goods and services. However, they discovered that CPIC Net had already registered domain names incorporating their marks, including the Domain Names.

The Registrarís database shows that CPIC Net registered the Domain Names on Saturday, January 22, after the first story on the merger was published in the press and before Time Warner and EMI officially announced their merger.

On January 27, 2000, Time Warner and EMI sent CPIC Net a first letter requesting that CPIC Net transfer to them the Infringing Domain Names or, in the alternative, requesting that CPIC Net cancel the registrations. On February 17, 2000, Mr. Syed Hussain, the administrative contact for CPIC Net, responded to the first letter by contacting Time Warner and EMIís attorney by phone. During that phone conversation, Mr. Hussain refused to transfer or cancel the registrations for the Domain Names. Mr. Hussain said that the two merging companies were creating a multi-billion dollar company, and that he would expect to be paid a significant percentage of the new companyís value to transfer the Domain Names to Time Warner and EMI. In a subsequent phone conversation with Time Warnerís counsel, Mr. Hussain offered to transfer the domain names for a price that would be "no less than $1,000,000." By a second letter, Time Warner and EMI notified Mr. Hussain of their refusal to accede to his monetary demand, and requested again that the domain names be transferred or cancelled. CPIC Net replied through its attorney that it was not willing to comply with Time Warner and EMIís request, and reiterated its offer to transfer the domain names for acceptable consideration only.

Time Warner and EMI have declared their intent to register their joint name with the respective trademark offices of the United States and the United Kingdom upon completion of their merger, which is still in process as of the filing of this complaint.

 

5. Partiesí Contentions

A. Complainants contend that the Domain Names are identical with and confusingly similar to the TIME WARNER Marks and the EMI Marks pursuant to the Policy paragraph 4(a)(i).

B. Complainants contend that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

C. Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

D. Respondent presented no evidence challenging that the Domain Names are identical with or confusingly similar to the TIME WARNER Marks and the EMI Marks.

E. Respondent presented no evidence of its rights or legitimate interest in the Domain Names.

F. Respondent presented no evidence that its registration and use of the Domain Names is in good faith.

 

6. Discussion and Findings

Even though Respondent has filed no Response and has offered no evidence attacking the contentions of Complainants, the Sole Panelist hereby reviews the evidence before him to determine whether the Complainants have supported each of the required elements in its contentions within the existing record.

Identity or Confusing Similarity.

Complainants must first establish that they have trademark rights in combinations of "Warner" and "EMI." Because both Complainants and Respondent have a nexus with the United States, the trademark law of the United States has persuasive authority in establishing the existence of such trademark rights.

When Time Warner and EMI announced the merger to the press, they presented the new company as Warner EMI Music. It was reported in the press under that name, but also as the EMI- Warner or Warner EMI merger. As established previously, Time Warner and EMI own the trademark registrations in their world-recognized names and possess common law rights to their joint name. Furthermore, Time Warner is commonly referred to by consumers or the media by the name "Warner" as evidenced by the news articles discussing the Warner EMI merger. The joint name of the new company has not yet been registered with the United States Patent and Trademark Office or the trademark office of the United Kingdom because the merger is still being finalized. However, Time Warner and EMIís rights in the new names are clear. The panel in British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050, ∂6.2, addressed the issue of a complainantís rights in an unregistered trademark. The panel explained that paragraph 4(a)(i) of the Uniform Dispute Resolution Policy does not "expressly limit the application of the Uniform Policy to a registered trademark or service mark of the Complainant." The panel further stated that the WIPO Final Report of the Internet Domain Name Process did not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names."

As a result of the fame of the TIME WARNER Marks and the EMI Marks and the corresponding publicity surrounding the announced merger, Time Warner and EMI have developed common law rights in the combination of "Warner" and "EMI" into "warneremi" and "emiwarner," as well as rights in other combinations of their famous registered trademarks. See, e.g., Walt Disney Prod. v. Kusan, Inc., 204 U.S.P.Q 284 (C.D. Cal 1979) (pre-release publicity is sufficient to obtain trademark rights); New West Corp. v. NYM Co. of Cal. Inc., 595 F.2d 1194, 1200 (9th Cir. 1979) ("use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark, is competent to establish ownership, even without evidence of actual sales."). Time Warner and EMI have declared their intent to register their joint name with the respective trademark offices of the United States and the United Kingdom upon completion of their merger, which is still in process as of the filing of this complaint.

The Sole Panelist having found that Complainants have common law trademark rights in combinations "warneremi" and "emiwarner," Complainants must show that the Domain Names are identical with or confusingly similar to the common law marks. Because each of the Domain Names uses "warneremi" or "emiwarner," the Panel finds that the Domain Names are identical with or confusingly similar to the common law marks.

In addition, "the overall impression" left by the Domain Names suggests that these domain names belong to Time Warner and EMI, and consumer confusion will inevitably result. In an ICANN dispute with a similar factual situation, EFG Bank European Financial Group S.A. v. Jacob Foundation, WIPO Case No. D2000-0036, ∂ 6(b)(i), the panel found that dissimilarities in the registered domain names and the complainant trademark did not preclude a finding of likelihood of confusion when "the difference was not apt to influence the overall impression left by the domain name." The same is true here. The "overall impression" left by the domain names registered by Respondent is confusingly similar to the registered TIME WARNER Marks and the EMI Marks, and is meant to suggest a joint ownership by these companies. Consumers will naturally assume that these names are owned or affiliated with Time Warner and EMI, and are a reflection of the publicized merger between these companies.

Therefore, the Sole Panelist finds that the Domain Names are identical with and confusingly similar to the common law rights of Complainants in "warneremi" and "emiwarner" and to the registered TIME WARNER Marks and the EMI Marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

There is no evidence showing that Respondent is using the Domain Names in connection with any website or legitimate business, nor is there any evidence that, before the filing of this complaint, Respondentís principal Mr. Syed Hussain had any intent to use or was prepared to use the domain names in connection with any legitimate business or in connection with any bona fide offering of goods or services.

Unlike Time Warner and EMI, neither CPIC Net nor any other business run by Mr. Hussain, is commonly known by any mark reflected by the Domain Names or by the phrases "Time Warner" or "EMI" standing alone. In addition, CPIC Net cannot claim any legitimate non-commercial use or fair use of the domain names, since Mr. Hussain is not using the Domain Names and has no intent to use them other than for the purpose of selling the domain names to Time Warner and EMI for an amount in excess of $1 million.

The evidence fails to demonstrate that Respondent has met any of the elements to prove it has rights or legitimate interest in the Domain Names as provided under the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

The Policy paragraph 4(b)(i) explains that for the purposes of demonstrating registration and use in bad faith under the Policy paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 documented out-of-pocket costs directly related to the domain name, or

(ii) you [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 have engaged in a pattern of such conductÖ

It was with knowledge of Time Warner and EMIís rights in its individual marks and new joint marks, and with the specific intent to trade off of those rights, that CPIC Net registered the Domain Names. The merger between Time Warner and EMI was reported in the United States on January 22, 2000, two days before it was announced by the companies. It is during that interval that Mr. Hussain systematically registered different combinations of the two companiesí marks in an attempt to exploit the expected use of these famous marks in a combined form. As a consequence of Mr. Hussainís action, Time Warner and EMI were unable to register their domain names after they announced their merger. Mr. Hussainís bad faith use of the domain names is further evidenced by the fact that he offered to transfer the domain names to Time Warner and EMI for an amount reaching $1 million, far above his out-of-pocket cost for registering the domain names.

As explained in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001, paragraph 4(b)(i) of the Policy states that bad faith registration and use are found when the circumstances indicate that a domain name was registered or acquired primarily "for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademarkÖ for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name." Applying the Policy, the panel found that respondentís offer to sell the domain name that was not used in conjunction with a website or a business, for an amount exceeding the out-of-pockets costs, constituted use in bad faith.

The facts in this case are similar to Astro-Med, Inc. v. Merry Christmas Everyone! and B. Evans, WIPO Case No. D2000-0072. In Astro-Med, upon learning of the merger between Grass Instruments Company and Telefactor Corporation, the respondent registered several domain names combining the two companiesí names and trademarks, namely "grasstelefactor.com" and "grass-telefactor.com", and purported to sell the domain names to the new company for $2,000. The panel found that the domain names were confusingly similar to the complainantsí individual marks and the new joint marks, and the registrantís intentional exploitation of the merged companyís new name constituted bad faith.

The timing of Mr. Hussainís registration, and the fact that Mr. Hussainís offered to sell the domain names to Time Warner and EMI for $1 million, demonstrate that Mr. Hussainís registration and use of the domain names were made in bad faith and not for a legitimate business purpose. In addition, Mr. Hussainís registration of the infringing Time Warner-EMI domain names reflects a pattern of bad conduct, evidenced by Mr. Hussainís registration of numerous other domain names that incorporate famous trademarks owned by Time Warner. Mr. Hussain has also attempted to obtain from Time Warner consideration exceeding his out-of-pocket cost for many of these domain names. These other domain names include: "warneremi.co.uk", "emiwarner.co.uk", "harrypotterbookone.com", "harrypottercollectible.com", "harrypotterfirstmovie.com", "harrypotterII.com", "harrypotterIII.com", "harrypottermovie.net", "harrypottermovie.org", "harrypotterthemovie.net", "harrypotterthemovie.org", "harrypotterwarnerbros.com", "themovieharrypotter.com", "movieharrypotter.com", and "harrypottertoys.com". After previous demand letters to Mr. Hussain regarding these additional domain names, all but three of these domain names were deleted; however, CPIC Net and/or Mr. Hussain are still the listed registrants of "warneremi.co.uk", "emiwarner.co.uk" and "harrypottertoys.com". The Sole Panelist finds that this constitutes a pattern of such conduct by Respondent.

Respondentís action establish registration and use of the Domain Names in bad faith pursuant to criteria in the Policy paragraphs 4(b)(i) and 4(b)(ii). Therefore, the Sole Panelist finds that the registration and use of the Domain Names are in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Names are identical with and confusingly similar to Complainantsí common law trademarks "warneremi" and "emiwarner" and to the registered TIME WARNER Marks and the EMI Marks, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the domain names "emiwarnermusic.com", "emiwarner.org", "emiwarner.net", "warneremi.net" and "warneremi.org" be transferred to Warner EMI Music.

 

Richard W. Page
Sole Panelist

July 27, 2000


 

AMENDMENT TO ADMINISTRATIVE PANEL DECISION

Time Warner Inc. and EMI Group plc v. CPIC Net

Case No. D2000-0433

 

This is an Amendment to the Administrative Panel Decision ("Decision") in Case No. D2000-0433 dated July 27, 2000.

The case was filed jointly by Time Warner Inc. and EMI Group plc against CPIC Net on May 15, 2000 and concerned the following domain names (the "Domain Names"): "emiwarnermusic.com", "emiwarner.org", "emiwarner.net", "warneremi.net", and"warneremi.org".

In the Complaint, it was requested that the Domain Names be transferred to the Complainant, without specifying whether this was meant to refer to Time Warner, Inc., EMI Group plc or Warner EMI Music, which, according to the Complaint, is the single corporate entity that is to result from the merger between the Complainants.

In the Decision, the Sole Panelist concluded (a) that the Domain Names are identical with and confusingly similar to Complainantsí common law trademarks "warneremi" and "emiwarner" and to the registered TIME WARNER Marks and the EMI Marks, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist ordered that the domain names "emiwarnermusic.com", "emiwarner.org", "emiwarner.net", "warneremi.net" and "warneremi.org" be transferred to Warner EMI Music.

The domain names were ordered to be transferred to Warner EMI Music after clarifications received by the Center from the Complainantsí representative regarding the Complaintís ambiguity on the intended beneficiary of the remedy sought.

However, on August 25, 2000, the Center received a further e-mail message from Complainantsí representative requesting that the Decision be amended to order the transfer to be made to Time Warner Inc. instead of Warner EMI Music.

Considering the nature of the request and the fact that it emanates from the representative of both Complainants who therefore can be assumed to be in agreement with it, the Sole Panelist decides to grant the request.

Consequently, the last sentence of the Decision is amended to read as follows: "Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the domain names "emiwarnermusic.com", "emiwarner.org", "emiwarner.net", "warneremi.net" and "warneremi.org" be transferred to Time Warner, Inc..

 


 

Richard Page
Sole Panelist

Dated: September 15, 2000