WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Home Box Office, Inc. v. dotPH Private Registration / J Sebastian

Case No. DPH2021-0001

1. The Parties

The Complainant is Home Box Office, United States of America (“United States”), represented by Betita Cabilao Casuela Sarmiento, Philippines.

The Respondent is dotPH Private Registration / J Sebastian, Philippines.

2. The Domain Name and Registrar

The disputed domain name <hbomax.com.ph> is registered with DotPH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2021. On July 8, 2021, the Center transmitted by email to DotPH a request for registrar verification in connection with the disputed domain name. On July 9, 2021, DotPH transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 19, 2021, providing the registrant and contact information disclosed by DotPH, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 22, 2021.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the Rules for .PH Uniform Dispute Resolution Implementation Rules (the “Rules”), and the WIPO Supplemental Rules (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 August 3, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2021. On July 25 and 31, 2021, the Respondent forwarded various email communications to the Center. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to panel appointment on August 26, 2021.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on September 10, 2021. 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

The Complainant is an American company, which operates internationally in the entertainment business, providing various undersubscription entertainment services, including a pay television network (with various international channels), a subscription on demand platform (“HBO On Demand”), and a streaming entertainment platform (“HBO MAX”). The Complainant’s HBO MAX platform is a global streaming entertainment platform available in various languages with content which includes original programming produced exclusively for the service, as well as content from other media, including blockbuster movies, cartoons, etc. The Complainant’s HBO Max platform is available internationally including in Philippines (where the Respondent is located according to the registrar verification). In addition to app-based access, the Complainant’s HBO MAX content is accessible online via its domain name <hbomax.com> (registered on February 18, 2000). The Panel, under its general powers articulated inter alia in paragraph 10 of the Rules, has consulted the Complainant’s corporate website and conducted various searches over the Internet regarding the Complainant’s business.

The Complainant operates under various trademarks, including HBO, MAX, HBO MAX, as well as other combinations of these trademarks (including HBO FAMILY, HBO HITS, HBO SIGNATURE, HBO GO, HBO FANDOME, HBO ORIGINALS, HBO MAX FANDOME, MAX FANDOME, and MAX ORIGINALS). These trademarks have been protected internationally in various jurisdictions, including the following trademark registrations:

- Philippine Registration No. 042091, HBO, figurative, registered on November 28, 1988, in Class 41;
- United States Registration No. 1020101, HBO, word, registered on September 9, 1975, in Class 41;
- United States Registration No. 1288284, MAX, word, registered on July 31, 1984, in Class 41; and
- United States Registration No. 6201484 HBO MAX, word, registered on November 17, 2020; (collectively the “HBO mark”, the “MAX mark”, or the “HBO MAX mark”).

The Complainant further owns more than 180 domain names comprising the HBO MAX mark, including <hbomax.com>, <hbomax.org>, <hbomax.fr>, <hbomax.co.uk>, <hbomax.nl>, <hbomax.be>, <hbomax.de>, as well as <hbo.com.ph> and <hbomax.ph>.

The disputed domain name was registered on November 1, 2020. According to the evidence provided by the Complainant, before the filing date of the Complaint, the disputed domain name resolved to a parked page of Marketplace offering its sale for a price amounting to USD 5,000.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The HBO, MAX, and HBO MAX marks are internationally well-known. The HBO mark was first used in commerce in 1972, the MAX mark was first used in commerce in 1980, and these marks have continuously been used since then. On July 9, 2019, the Complainant officially announced the brand name for its new streaming service HBO MAX, and this announcement was extensively reported in various publications across the world (even before it took place). The HBO MAX mark was also highly publicized from this announcement. Various evidences in support of these allegations and copies of publications are provided.

The disputed domain name is identical or confusingly similar to the Complainant’s trademarks and domain names. The disputed domain name incorporates in their entirety the HBO, MAX, and HBO MAX marks, and the country code Top-Level Domain (“ccTLD”) “.com.ph” should be disregarded in the comparison.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. No third party owns a trademark application or registration in the Philippines for the terms “hbo” and/or “hbo max”, there is no connection between the Parties, the Respondent has not been authorized to use the Complainant’s trademarks, and has not used the disputed domain name in connection with a bona fide offering of goods or services.

The disputed domain name was registered and is been used in bad faith. Due to the reputation of the Complainant’s trademarks, the only plausible inference is that the Respondent targeted these marks to take advantage on their associated goodwill, for transferring the disputed domain name to the Complainant or any third party. The disputed domain name was listed for sale in the dotPH Marketplace on January 28, 2021 (only 2 months after its registration), and remained to be listed for sale at the time of filing the Complaint, resolving to a parked webpage stating it is “for sale”. The disputed domain name has not being used for any offering of goods or services.

The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

In various email communications to the Center (on July 25 and 31, 2021), the Respondent indicated it was open to the transfer of the disputed domain name. The Respondent indicated that it had already received two offers higher than USD 8,000 for the disputed domain name and had been contacted by a porn site based in Canada, but it “would be more inclined to transfer the domain via easy process and to entity’s who can show respect by offering a win-win transaction”.

6. Discussion and Findings

The Complainants have made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the case examining the three elements in paragraph 4(a) of the Policy,¹ taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.

The Panel further wishes to note the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP” or “UDRP Policy”). Therefore, for the purpose of having interpretation criteria for the analysis of this case, the Panel may take into consideration the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), as appropriate.

A. Identical or Confusingly Similar

The Complainant indisputably has rights in the registered trademarks HBO, MAX, and HBO MAX, both by virtue of its trademark registrations and as a result of its global goodwill and reputation.

The disputed domain name incorporates these trademarks in their entirety, and the gTLD “.com.ph” is a technical requirement, generally disregarded for the purpose of the analysis of confusing similarity. The Panel considers that the HBO, MAX, and HBO MAX marks are recognizable in the disputed domain name. See sections 1.7 and 1.11, WIPO Overview 3.0.

Accordingly, this Panel finds that the disputed domain name is identical to the HBO MAX mark, and confusingly similar to the HBO and MAX marks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, with reference to the UDRP Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view, regarding the UDRP Policy (which the Panel finds appropriate to consider here), is that this second element shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.

The Complainant’s assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.

The Respondent has not formally replied to the Complainant’s contentions, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name.

According to the evidence provided by the Complainant, the Panel notes that the disputed domain name was used in connection to a landing site offering the disputed domain name for sale for a price exceeding its normal registration costs. Although this parked site has apparently been taken down at some moment after the Complaint, the Respondent forwarded various email communications to the Center offering the transfer of the disputed domain in a “win-win transaction” (in its words), stating that it had already had various offers over USD 8,000 for the disputed domain name.

Therefore, there is no evidence showing that the Respondent is commonly known by the disputed domain name, no indication of any bona fide offering of goods or services under the disputed domain name, and no indication of any legitimate noncommercial or fair use of the disputed domain name.

Furthermore, the nature of the disputed domain name, incorporating in their entirety the Complainant’s trademarks, falsely suggests affiliation or endorsement by the Complainant, which is not the case.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.

The applicable standard of proof is the “balance of probabilities” or “preponderance of the evidence”, the Panel being prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

The Panel notes the international use of the Complainant’s trademarks, and their extensive presence over the Internet, being internationally well-known. Particularly, the HBO and HBO MAX marks. The HBO MAX mark has been relatively recently first used in commerce (approximately one year and 4 months before the registration of the disputed domain name). However, since its launch it has been extensively promoted and internationally used, having extensive presence over the Internet. Therefore, the Panel considers it unlikely that the Respondent did not have knowledge of these trademarks at the time of registration of the disputed domain name.

Additionally, in the Panel’s view, it would be normal for a registrant to do a search for the registration of any domain name, which, at the time of the registration of the disputed domain name, may have revealed the Complainant’s domain names <hbo.com.ph>, <hbomax.ph>, as well as the domain name <hbomax.com> where the Complainant’s entertainment services are internationally available, including in the Philippines. The Panel, under its general powers articulated inter alia in paragraph 10 of the Rules, has corroborated that the Complainant’s platform HBO MAX is available in Philippines through its website “www.hbomax.com”.

The Panel further considers that the cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:

(i) the disputed domain name is identical to the HBO MAX mark, and includes in their entirety the HBO and MAX marks;

(ii) the Complainant’s trademarks are well known internationally and the Complainant operates internationally including the Philippines, where the Respondent is located according to the registrar verification;

(iii) the Respondent used a privacy protection service to hide its identity in the WhoIs record of the disputed domain name;

(iv) according to the evidence provided by the Complainant (not rebutted by the Respondent), the disputed domain name was offered to sale two months after its registration, resolving to a landing page of dotPH Marketplace (being offered for USD 5,000);

(v) although the landing parked page that was linked to the disputed domain name has been apparently taken down, the Respondent’s communications to the Center indicates that it’s intention is still to sell the disputed domain name for a price exceeding its registration costs;

(vi) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith.

Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the Respondent knew or should have known about the Complainant’s trademarks, and the disputed domain name was very likely registered targeting these reputed trademarks with the intention of obtaining a free ride on the Complainant’s reputation. All of the circumstances in this case indicate that the Respondent’s intention has been transferring the disputed domain name to the Complainant, a competitor of the Complainant, or to any third party for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name.

Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <hbomax.com.ph> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: September 20, 2021

¹ Paragraph 4(a) of the phDRP lists the three elements, which a complainant must satisfy in order to divest a respondent of a domain name: (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith.