Univision Communications Inc. v. DomainAdministrationLimited a/k/a William Vaughan
Claim Number: FA0803001159952
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge
Arciniega, of McDermott Will & Emery LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <univision41.com>, registered with Enom, Inc.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 12, 2008.
On March 11, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <univision41.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 2008 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@univision41.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <univision41.com> domain name is confusingly similar to Complainant’s UNIVISION mark.
2. Respondent does not have any rights or legitimate interests in the <univision41.com> domain name.
3. Respondent registered and used the <univision41.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Univision Communications Inc., is in the
business of television broadcasting services.
Univision Communications Inc. is the leading Spanish-language media
company in the
Respondent, DomainAdministrationLimited, registered the <univision41.com> domain name on March 14, 2002. The disputed domain name resolves to a parked page with hyperlinks to businesses, some of which are in direct competition with Complainant.
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.
The Panel finds
that the registration with the USPTO of the UNIVISION mark by Complainant has
sufficiently established its rights under Policy ¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”).
The Panel finds that Respondent’s <univision41.com> domain name is confusingly similar to Complainant’s UNIVISION mark under Policy ¶ 4(a)(i) as it incorporates Complainant’s entire mark and adds the generic number “41,” which has an obvious relationship to Complainant’s New York television station. When evaluating if the disputed domain name is confusingly similar, the generic top-level domain “.com” is immaterial. Therefore, the Panel finds that Respondent’s <univision41.com> domain name is confusingly similar to Complainant’s UNIVISION mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also 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.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The burden of proof shifts when Complainant makes a prima facie case that Respondent does not have rights or legitimate interests in the <univision41.com> domain name under Policy ¶ 4(a)(ii). Thereafter, an insufficient response by Respondent furthers the presumption that it has no rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case, but chooses to examine all of the evidence before making a final determination with regards to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
The Panel infers that Responent is using the disputed domain name to earn click-through fees, which is not a bona fide offering of goods or services. Respondent is using the <univision41.com> domain name to resolve to a parked page displaying third-party hyperlinks, some of which are Complainant’s direct competitors. Therefore, the Panel finds that Respondent has not made 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). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Moreover, Respondent’s WHOIS information does not demonstrate that Respondent is commonly known by the <univision41.com> domain name and there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain name. Furthermore, Complainant asserts that Respondent is not affiliated, connected or associated with Complainant nor otherwise authorized to register or use Complainant’s UNIVISION mark. Therefore, the Panel finds that Respondent is not commonly known by the <univision41.com> domain name pursuant to Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The
Panel finds that Respondent is using the disputed domain name to divert
Internet users to hyperlinks of Complainant’s competitors. Therefore, the Panel finds Respondent’s use
of the <univision41.com> domain name as evidence of
bad faith registration and use under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy ¶
4(b)(iii)); see also Disney Enters., Inc.
v. Noel, FA 198805 (Nat. Arb. Forum Nov.
11, 2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Additionally, based on uncontested
evidence from Complainant, the Panel finds that Respondent receives
click-through fees for the displayed hyperlinks on the website that resolves
from the <univision41.com> domain name, some of which
are in direct competition with Complainant’s business. Furthermore, the Panel finds that Respondent’s
disputed domain name is confusingly similar to Complainant’s UNIVISION mark and
has a potential to mislead Internet users of Complainant’s affiliation with the
resolving website. Such commerical
benefit constitutes bad faith registration and use under Policy ¶
4(b)(iv). See Qwest Comm’ns Int’l Inc. v.
Ling Shun Shing, FA 187431 (Nat. Arb.
Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit
from the misleading <qwestwirless.com> domain name by linking the domain
name to adult oriented websites, gambling websites, and websites in competition
with Complainant. Respondent’s attempt
to commercially benefit from the misleading domain name is evidence of bad
faith pursuant to Policy ¶ 4(b)(iv).”); see
also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad
faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a
website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes); 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.’”).
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 <univision41.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 6, 2008
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