Univision Communications Inc. v. js park
Claim Number: FA2105001944918
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of Loeb & Loeb LLP, California, USA. Respondent is js park (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <televisa-univision.net> and <televisaunivision.net>, registered with Korea Server Hosting Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2021. The Forum received payment on May 13, 2021.
On June 20, 2021, Korea Server Hosting Inc. confirmed by e-mail to the Forum that the <televisa-univision.net> and <televisaunivision.net> domain names are registered with Korea Server Hosting Inc. and that Respondent is the current registrant of the names. Korea Server Hosting Inc. has verified that Respondent is bound by the Korea Server Hosting Inc. registration agreement, which is in Korean, and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 21, 2021, the Forum served the Complaint and all Annexes, including a Korean Written Notice of the Complaint, setting a deadline of July 12, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@televisa-univision.net, postmaster@televisaunivision.net. Also on June 21, 2021, the Korean Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent submitted a communication via email on June 18, 2021.
On July 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
As noted, the Registration Agreement is in Korean. Pursuant to Rule 11(a), the language of the proceeding shall be Korean unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Respondent has requested that the proceeding be in Korean. Complainant has requested that the proceeding be in English.
The Panel notes that the domain names are in English. Persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language, including that a reverse WhoIs search on May 4, 2021 identified 143 additional domain names in the English language controlled by Respondent, many of which incorporate names and marks of famous companies that are based in English-speaking countries and/or have international presence.
Further, Respondent’s email address as shown in the Whois information regarding the domain names is the same as that of the respondent in Univision Communications Inc. v. Bak J-seon, FA1944908 (Forum July 10, 2021), in which this Panel determined English to be the language of the proceeding.
Accordingly, the Panel finds that there would be no undue prejudice to Respondent if English were the language of the proceeding. After considering the circumstance of the present case, the Panel decides that the proceeding shall be in English.
A. Complainant
Complainant is a Spanish-language media company on the United States with a portfolio including television, radio, internet and mobile operations that merged with the Spanish media company, Televisa, on April 13, 2021. Complainant has rights in the UNIVISION mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <televisa-univision.net> and <televisaunivision.net> domain names are identical or confusingly similar to Complainant’s UNIVISION mark and its new name, Televisa-Univision.
Respondent lacks rights and legitimate interests in the <televisa-univision.net> and <televisaunivision.net> domain names as Respondent is not commonly known by the domain names and Complainant has not licensed or authorized Respondent to use the UNIVISION mark. Additionally, Respondent does not use the domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent is not making any active use of the domain names.
Respondent registered the <televisa-univision.net> and <televisaunivision.net> domain names in bad faith with constructive and/or actual knowledge of Complainant’s rights in the UNIVISION mark based on the substantial fame of the mark. Respondent has engaged in a pattern of bad faith registration and use based on its multiple registrations of domain names that incorporate other famous marks. Respondent registered the domain names incorporating Complainant’s new name only one day after Complainant announced its merger with Grupo Televisa, S.A.B., to create a company under the name Televisa-Univision. Respondent thereby manifested opportunistic bad faith. Respondent is not making any active use of the domain names.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
Complainant has established all the elements entitling it to relief.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
On April 13, 2021, Complainant announced its merger with Grupo Televisa, S.A.B., to create the largest Spanish language media company in the world under the name Televisa-Univision. On April 14, 2021, Respondent registered both the <televisa-univision.net> and <televisaunivision.net> domain names. Neither resolves to an active website. Since Respondent has the same email address as the respondent in Univision Communications Inc. v. Bak J-seon, FA1944908 (Forum July 12, 2021), the Panel concludes that Respondent also registered the <televisa-univision.com> and <televisaunivision.com> domain names on the same day.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). The Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct.
The circumstances set out above in relation to the second element and, in particular, the timing of Respondent’s registration of the domain names, satisfy the Panel that Respondent was then fully aware of Complainant’s well-known UNIVISION mark and its announced merger under the new name Televisa-Univision, and did so in bad faith for the purpose set out in paragraph 4(b)(ii) of the Policy.
The large number of additional domain names shown by Complainant to have been registered by Respondent incorporating famous trademarks of others demonstrates that Respondent has engaged in a pattern of such conduct for the purposes of paragraph 4(b)(ii). They include <astrazenecagilead.com>, <barclays-standardchartered.com>, <cbs-viacom.com>, <cnncbs.com>, <ericssonnokia.com>, <exxonmobilchevron.com>, <fiatchryslerrenault.com>, <fujifilm-xerox.com>, <ingersollrandgardnerdenver.com>, <londonstockexchangerefinitiv.com>, <philipmorrisaltria.com>, <renaultfiatchrysler.com>, <societegeneraleunicredit.com>, <sonyviacom18.com>, <ubereatspostmates.com>, <ubscreditsuisse.com>, <verizondisney.com>, <viacom-cbs.com> and <xeroxfujifilm.com>.
Accordingly, the Panel finds that Respondent registered and is using the <televisa-univision.net> and <televisaunivision.net> domain names in bad faith.
Complainant has established this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <televisa-univision.net> and <televisaunivision.net> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 15, 2021
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