Azteca Web, S.A. de C.V. v. St Kitts Registry
Claim Number: FA0706001002510
Complainant is Azteca Web, S.A. de C.V. (“Complainant”), represented by Seth
A. Horwitz, of Glast, Phillips & Murray, P.C., 13355
Noel Road,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <deportestvazteca.com>, registered with Moniker Online Services, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 8, 2007.
On June 13, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <deportestvazteca.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby 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 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 5, 2007 by which Respondent could file a response to the Complaint, was transmitted 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 postmaster@deportestvazteca.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 10, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <deportestvazteca.com> domain name is confusingly similar to Complainant’s TV AZTECA mark.
2. Respondent does not have any rights or legitimate interests in the <deportestvazteca.com> domain name.
3. Respondent registered and used the <deportestvazteca.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Azteca Web, S.A. de C.V., is owner of the
second largest Mexican television network, reaching thirteen countries in
Central and
Respondent registered the <deportestvazteca.com> domain name on September 12, 2000. The disputed domain name resolves to a portal website featuring links to Complainant’s own website as well as to a series of other commercial websites, some of which directly compete with Complainant’s business.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant asserts rights in the TV AZTECA mark through registration of the mark with the USPTO. The Panel finds that Complainant’s timely registration of the mark sufficiently establishes its rights in the mark in accordance with Policy ¶ 4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world); see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that the complainant’s registration of the AMERIDREAM mark with the USPTO established its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The disputed domain name contains Complainant’s protected mark in its entirety and adds the descriptive term “deportes,” a Spanish word meaning “sports,” a prominent part of Complainant’s television programming. It also adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of both a descriptive term and a gTLD to an otherwise identical mark suggests that the domain name is confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In instances where Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to set forth evidence indicating that it has rights or legitimate interests in accordance with Policy ¶ 4(a)(ii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that this Complainant’s assertions are sufficient to establish a prima facie case for purposes of the Policy. See 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).
Respondent’s disputed domain name resolves to a website featuring links to commercial websites, some of which compete with Complainant’s business. The Panel finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant adduces that Respondent is not commonly known by
the disputed domain name. Absent
countervailing evidence and in light of Respondent’s WHOIS registration
information, which indicates that the registrant of the <deportestvazteca.com> domain name is
“St Kitts Registry,” the Panel finds that Respondent is not commonly known by
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Ian Schrager
Hotels, L.L.C. v. Taylor, FA 173369 (Nat.
Arb. Forum Sept. 25, 2003) (finding
that without demonstrable evidence to support the assertion that a respondent
is commonly known by a domain name, the assertion must be rejected); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website
featuring, inter alia, links to
competing websites. The Panel finds that
such use suggests a disruption of Complainant’s business and implicates Policy
¶ 4(b)(iii). See Luck's Music Library v. Stellar Artist
Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the
respondent engaged in bad faith use and registration by using domain names that
were identical or confusingly similar to the complainant’s mark to redirect
users to a website that offered services similar to those offered by the
complainant); see also Persohn v. Lim, FA 874447 (Nat.
Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to
Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate
a commercial search engine with links to the complainant’s competitors).
Respondent presumptively receives income from its diversionary use of the disputed domain name. Respondent’s use of commercial links on its website is also likely to evoke confusion among unsuspecting Internet users expecting to view information about Complainant’s business. The Panel finds that Respondent’s use implies an attraction for commercial gain, which evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deportestvazteca.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 17, 2007
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