Claim Number: FA0706001000079
Complainant is Univision Communications Inc. (“Complainant”), represented by Han
Yu of McDermott Will & Emery LLP, 2049 Century Park East, Suite 3400,
Los Angeles, CA, 90067.
Respondent is Edmundo Norte c/o Harvardhomeboy.com (“Respondent”), represented by
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <univision.tv>, registered with eNom, Inc.
The undersigned certify that they have acted independently and impartially and that to the best of their knowledge they have no known conflict in serving as Panelists in this proceeding.
Joel M. Grossman, Esq., Professor David E. Sorkin, and the Hon. Carolyn Marks Johnson sit as Panelists with Ms. Johnson writing the Decision for the Panel.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 7, 2007; the National Arbitration Forum received a hard copy of the Complaint June 8, 2007.
On June 8, 2007, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <univision.tv> domain name is registered with eNom, Inc. and that the Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 11, 2007, the National Arbitration Forum transmitted a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 2, 2007, by which Respondent could file a Response to the Complaint, to the Panel and to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
On July 1, 2007, Respondent requested an extension of time to respond to the Complaint. The National Arbitration Forum granted Respondent’s request July 2, 2007, extending the time by which Respondent could file a timely Response to July 18, 2007.
The National Arbitration Forum received a timely Response and determined it to be complete July 18, 2007.
The National Arbitration Forum received a timely and complete Additional Submission from Complainant July 23, 2007.
The National Arbitration Forum received a timely and complete Additional Submission from Respondent July 30, 2007.
On August 2, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq., Professor David E. Sorkin, and the Hon. Carolyn Marks Johnson as Panelists.
Respondent alleges that Complainant complied with ICANN Rule ¶ 3(b)(xiii), but submitted this dispute to the wrong mutual jurisdiction because Complainant submitted to jurisdiction in the Central District of California, when correct jurisdiction lies in the Northern District of California. In its Additional Submission, Complainant admits that it was in error when it consented to the Central District of California.
Although the Panel has discretion to dismiss the Complaint without prejudice should it determine that this deficiency requires dismissal of the Complaint, the Panel finds that this error is inconsequential to these proceedings and does not affect the outcome. Further, the Panel infers that Complainant’s admission that jurisdiction is in the Northern District of California indicates a willingness and intent to transfer proceedings to that jurisdiction.
The Panel finds it appropriate to proceed with the UDRP analysis of this dispute.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions in this proceeding:
1. The disputed domain name that Respondent registered, <univision.tv>, is identical to or confusingly similar to Complainant’s UNIVISION mark.
2. Respondent has no rights to or legitimate interests in the UNIVISION mark and the domain name containing that mark in its entirety.
3. Respondent registered and used the domain name in bad faith.
B. Respondent makes the following points in Response:
1. The domain name is not identical to or confusingly similar to Complainant’s UNIVISION mark because it is not related to the “same or similar products and/or services in a manner that would confuse consumers.”
2. Respondent had legitimate rights in the disputed domain name when he created it because “he and his colleagues were developing plans to use the website to inform Latinos about health care, legal rights and services, personal finance, education, employment, among other subjects while poking [sic] at Univision.”
3. Respondent did not act in bad faith in registering the domain name “because Mr. Norte and the others decided to register univision.tv for this purpose, and to design the website to parody Univision which promotes consumerism to the detriment of those who can ill afford it.”
4. Respondent is not using the domain name in bad faith because: “The webpage is a standard parked page that the registrar has put up. … Mr. Norte has contacted the registrar to get it to change the parked page.”
5. Respondent plans to use the website “to parody Univision.”
6. The Doctrine of Laches precludes relief for Complainant.
C. Additional Submissions
Complainant made the following points in its Additional Submission:
1. Complainant does not have to show likelihood of confusion of consumers in order to satisfy the first prong of the burden.
2. Other entities using the Univision mark are not in Complainant’s area of commerce and Complainant holds “written co-existence agreements with three of the five entities” Respondent cited.
3. Complainant supports numerous public interest organizations in the Latino Community and dispenses public interest information.
4. Respondent produced no evidence to support any plan to inform the Latino Community or operate a parody site.
5. One seeking the equitable doctrine of laches must have clean hands.
6. Respondent failed to show reliance and or detriment or material prejudice as a result of any delay in Complainant’s filing of an action.
Respondent made the following points in its Additional Submission:
1. Complainant’s evidence is insufficient to meet its burden.
2. Complainant has failed to show that its UNIVISION mark is famous other than in a “niche market.”
3. Respondent has spent $7,000 to $8,000 maintaining the website.
4. Complainant made the first offer to buy the website.
Complainant established that it has rights in the UNIVISION mark by several trademark registrations with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,624,073 issued November 20, 1990).
Complainant’s Registration for the UNIVISION mark shows a first use in commerce for the mark in February of 1987.
Complainant registered the mark for multiple uses including chat rooms and discussions, transmission of messages and entertainment in the computer, theater and travel industries.
Respondent’s submissions show that Complainant has maintained continuous registration of the UniVision mark ranging from 1996 to 2007.
The WHOIS information for the <univision.tv> domain name indicates the disputed domain name was registered in July 2005, although Respondent contends that he actually registered the disputed domain name in 1999.
Notwithstanding, the registration of the disputed domain name is later in time than Complainant’s first registration of the UNIVISION mark and is later in time than Complainant’s first use of the mark in commerce.
No evidence shows Respondent’s use of the disputed domain name in any manner other than its use to display hyperlinks.
No evidence supports Respondent’s contention that he intends to develop the website as a parody of Complainant’s television shows and in hopes of offering health information to Complainant’s television audience.
No evidence supports Respondent’s alleged plans or alleged development expenses to accomplish that result.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 Complainant to 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) Respondent has no rights or legitimate interests in the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel further finds that the <univision.tv> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s mark in its entirety with the addition of a country code top-level domain. The Panel finds that the addition of the country code top-level domain (“ccTLD”) “.tv” is irrelevant to a Policy ¶ 4(a)(i) analysis as a top-level domain is required of all domain names. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”); see also Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to the complainant’s CLAIROL marks).
While Respondent contends that the <univision.tv> domain name cannot be found to be identical to Complainant’s mark because it will be used for services not in competition with Complainant, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in a mark and whether or not the disputed domain name is identical to or confusingly similar to Complainant’s mark.
Respondent also contends that he intends an alleged future use of the mark. Policy ¶ 4(a)(i) looks only to whether Complainant has a protected mark and if the disputed domain name is identical to or confusingly similar to that mark.
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights to or legitimate interests in the domain name contained in its entirety within the disputed domain name that Respondent registered. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel finds that Complainant’s submission is sufficient to establish a prima facie case.
Complainant also alleges that Respondent is using the <univision.tv> domain name to host a website that displays hyperlinks to various third-party websites, some of which seek to compete directly with Complainant. Complainant further asserts that Respondent profits from the use of the disputed domain name in this way through the accrual of click-through fees from the links displayed on the <univision.tv> domain name. The Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Further, Complainant contends that Respondent is not known commonly by the disputed domain name. No evidence in the record suggests that Respondent is commonly known by the disputed domain name and Respondent’s WHOIS information indicates that Respondent is “Edmundo Norte c/o Harvardhomeboy.com”. Nothing in this record suggests that Respondent is or has ever been known by the disputed domain name.
Complainant also maintains that Respondent is not authorized to use Complainant’s mark in any way. Respondent failed to produce any evidence to counter this contention.
The Panel therefore finds that Respondent is not commonly known by the domain name, <univision.tv>, under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
No evidence suggests that Respondent has ever used the disputed domain name in a manner other than its use to display hyperlinks, Respondent contends that his intention is to develop the website to be a parody of Complainant’s television shows, in hopes of offering health information to Complainant’s television audience. Respondent contends he had plans demonstrating this proposed use, but is no longer in possession of them. The Panel finds these contentions insufficient to show an intent to use the <univision.tv> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Respondent did not demonstrate rights to or legitimate interests in the disputed domain name and did not support his claim of an intent for future use as a parody site.
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Complainant also urges that Respondent acted in bad faith in registering and using a domain name containing in its entirety Complainant’s protected mark and that Respondent is using the <univision.tv> domain name to commercially benefit from a likelihood of confusion as to Complainant’s affiliation with Respondent’s disputed domain name and corresponding website. Respondent urges that the domain name is “parked” and that he has not benefitted. The Panel finds that Complainant is not required to wait until Respondent’s use produces a commercial benefit or causes confusion to complain; these circumstances support findings of bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Additionally, Complainant alleges that Respondent had actual knowledge of Complainant’s UNIVISION mark at the time Respondent registered the <univision.tv> domain name. Respondent admits to knowledge of Complainant’s mark and and its services; Respondent contends that he registered the <univision.tv> domain name with the intent to create a “parody” website of Complainant’s television offerings. Respondent came forward with no evidence to support the claim and acknowledges that he lost his plans. The Panel finds the disputed domain name was registered with actual knowledge of Complainant’s mark, and this supports findings of bad faith registration and use under Policy ¶ 4(a)(iii). See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").
Respondent also asserts that Complainant cannot complain after seven (7) years of silence under the equitable doctrine of laches. To address Respondent’s claim of laches, Complainant admitted that it has known about Respondent’s registration of the <univision.tv> domain name for several years. Complainant concedes further that since at least 2001, when Respondent and Complainant communicated regarding the <univision.tv> domain name, Complainant took no action against Respondent relative to the domain name. Complainant explains here that at the time of those discussions, Respondent offered to transfer the disputed domain name to Complainant for a monetary amount in excess of Respondent’s out-of-pocket expenses. The Panel also finds that Respondent’s offer to sell the domain name for an amount in excess of reasonable development expenses supports findings of bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Respondent contends that Complainant cannot satisfy ICANN Policy ¶ 4(a)(iii) because Complainant cannot prove that Respondent registered the disputed domain name in bad faith. Since the Panel has found that Respondent had knowledge of Complainant’s rights in the UNIVISION mark when registering the <univision.tv> domain name, the Panel rejects this assertion. Further, Respondent’s registration of a domain name using Complainant’s protected mark also deprives Complainant of the ability to obtain domain names corresponding to its trademarks, seeks to benefit those who would compete with Complainant, and diverts Internet users seeking Complainant’s goods or services for Respondent’s own commercial gain. This also supports findings of bad faith.
Further, both Complainant and Respondent submitted evidence showing prior communications regarding the <univision.tv> domain name and while Complainant alleges that Respondent offered to sell the disputed domain name for a price in excess of expected development costs, Respondent contends that Complainant initated the offer to buy the <univision.tv> domain name. In the Panel’s view, Respondent’s bad faith is adequately demonstrated by other evidence, and Respondent’s offer to sell the domain name to Complainant at a premium price is at least consistent with that evidence.
The Doctrine of Laches
Two other issues require discussion by the Panel. The first is the doctrine of laches. To address Respondent’s claim of laches, Complainant admits that it has known of Respondent’s registration of the <univision.tv> domain name for several years, since at least 2001 when Respondent and Complainant communicated regarding the <univision.tv> domain name. Complainant alleges that at that time, Respondent offered to transfer the disputed domain name to Complainant for a monetary amount more than Respondent’s out-of-pocket expenses.
Respondent alleges that Complainant’s failure to bring this Complaint for more than seven years since the <univision.tv> domain name was allegedly registered is evidence that Complainant did not believe its claims to be warranted under the Policy. Respondent asserts that this delay leads to the conclusion that Complainant did not feel that Respondent was violating Complainant’s rights under the Policy.
Although laches is not an affirmative defense in a domain name dispute, Panels may consider a Complainant’s delay in seeking recourse in determining if a Respondent has developed rights in the disputed domain name by bona fide or legitimate use of the domain name. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defense in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
Laches is an equitable doctrine. Black’s Law Dictionary defines the term as follows:
[The] Doctrine of Laches is based upon the maxim that equity aids the vigilant and not those who slumber on their rights. It is defined as a neglect to assert a right or claim which, taken together with lapse of time and other circumstances causing prejudice to adverse party, operates as a bar in court of equity.
Being an equitable doctrine, laches requires clean hands of the one asserting it. Black’s also defines this term:
Under this doctrine, equity will not grant relief to a party, who, as actor, seeks to set judicial machinery in motion and obtain some remedy, if such party in prior conduct has violated conscience or good faith or other equitable principle. … One seeking equitable relief cannot take advantage of one’s own wrong.
This is not a case in which Respondent may benefit from the doctrine of laches. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”). Furthermore, even if this Panel were amenable to considering a laches defense, Respondent has not alleged sufficient prejudice to support such a defense.
In Respondent’s Additional Submission, he alleges that Complainant misrepresented facts to the Panel, and asks the Panel to find that Complainant has engaged in reverse domain name hijacking. By making such an allegation, Respondent is alleging that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the disputed domain name or facts to show that Respondent registered and is using the <univision.tv> domain name in bad faith. The Panel disagrees with Respondent’s contention. Complainant’s filing of the instant Complaint is based on Complainant’s legal rights under the USPTO in the UNIVISION mark, its claim that the disputed domain name, <univision.tv>, contains its protected mark in its entirety, and its complaint that Respondent seeks to be active with the domain name in the same general areas of commerce in which Complainant is active. These facts support a finding that Complainant’s filing does not abuse UDRP Policy. See Rusconi Editore S.P.A. v. Bestinfo, D2001-0656 (WIPO July 5, 2001) (“[G]iven the Complainant’s trade mark rights, the similarity of the Domain Name to Complainant’s trade mark and the failure (albeit for good reason) of the Respondent to respond to the Complainant’s letters, the Panel does not believe that this complaint constitutes an abuse of the Policy.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <univision.tv> domain name be TRANSFERRED from Respondent to Complainant.
The Hon. Carolyn Marks Johnson
Joel M. Grossman Professor David E. Sorkin
Dated: August 16, 2007.
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