Univision Communications Inc. v. Luis Martinez c/o All World Sales
Claim Number: FA0803001163833
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 <univision.us>, registered with Godaddy.com, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 14, 2008; the Forum received a hard copy of the Complaint on March 19, 2008.
On March 17, 2008, Godaddy.com, Inc. confirmed by e-mail to the Forum that the domain name <univision.us> is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.Com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 1, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 21, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on April 18, 2008.
A timely Additional Submission from Complainant was received on April 22, 2008.
A timely Additional Submission from Respondent was received on April 28, 2008.
On April 24, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
All submissions were considered by the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complaint is based on Complainant’s well-known and registered
UNIVISION mark. Complainant is the
leading Spanish language media company in the
Complaint and its affiliates own a number of
Complainant and its affiliates have registered the UNIVISION mark in numerous other countries around the world.
Respondent’s <univision.us> domain name is identical to the Complainant’s well-known and registered UNIVISION mark.
Respondent is using the <univision.us> domain name for a web directory that contains links to various third party websites unrelated to Complainant’s mark, websites from which Respondent presumably earns “click-though” or “referral” fees for redirecting traffic to those sites.
Respondent is not commonly known by the <univision.us> domain name.
Complainant has never authorized Respondent to register or use Complainant’s UNIVISION mark as part of any domain name.
Respondent’s <univision.us> domain name was registered on December 6, 2007, long after Complainant’s rights in the UNIVISION mark had been established.
Given the notoriety of Complainant’s UNIVISION mark and the fact that Complainant’s mark has been registered on the Principal Register of the U.S. Patent and Trademark Office, Respondent had either actual or constructive knowledge of Complainant’s mark at the time of registration of the <univision.us> domain name.
Probably, Respondent’s disputed domain name sounds equal to and reads equal to the Complainant’s trademark, but there is a big difference in Internet results. There is a clear difference between <univision.us> and Complainant’s web page; and there is no traffic from Complainant’s web page delivered to <univision.us>.
Respondent claims rights to the disputed domain name <univision.us> because Respondent plans to open different accounts with merchants for drop shipping their products. Respondent is in the process of developing a website. The idea behind <univision.us> was a short name of Universe Vision.
traffic to Complainant’s web page comes from Central and South American
Until the registration of the domain name by respondent, different third parties owned the domain name including the administrative contract.
The Respondent acquired a domain name that had apparently been abandoned by its previous owners on different periods of time since the first registration on April 2002, and acquired it for a legitimate use of retailing optical products over the Internet.
C. Additional Submissions
Respondent has presented no evidence whatsoever to show that he has a genuine intent to develop and operate a bona fide website at the <univision.us> domain name.
Respondent has put forth no evidence to support any of his claims, all of which are just as “empty” as his current website.
The mere fact that an infringing domain name was abandoned by its previous owner and became available for registration cannot excuse an act of misappropriation.
Respondent objects the Additional Submission of Complainant because it is not in accordance with Rule 7(f) “Additional submissions and responses to additional submissions may not amend the original Complaint or Response.”
It is impossible for Complainant to show that Respondent wants to use the disputed domain name to cause confusion because that is not the intention of Respondent.
Respondent admits the validity of Complainant’s registrations, but alleges that Complainant’s rights are not superior to any other UNIVISION trademark holder. Complainant’s rights are, as the multiple registrations for identical marks show, limited in scope.
There is no relation between the disputed domain name and the trademark, because if the consumer put UNIVISION on a search page that points to the sites where UNIVISION is mentioned, there are many sites where UNIVISION is mentioned and most of them do not belong to the Complainant.
Respondent, since the beginning of this administrative procedure, never had and does not have the intention to sale, lease, rent, abandon, leave, share, or any such conduct that could lead to receiving any monetary benefit against or in exchange for the disputed domain name from Complainant as well from the other persons who were calling the Respondent asking to purchase the disputed domain name.
For the reasons set forth below, the Panel finds for 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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant, Univision Communications, Inc., has established rights to the UNIVISION mark by registering the mark with many government trademark authorities, including registration with the United States Patent and Trademark Office (“USPTO”) on November 20, 1990 (Reg. No. 1,624,073). The Panel finds that Complainant’s registration of the UNIVISION mark is sufficient to establish rights under Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also 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.”).
The Panel finds that the <univision.us> domain name is identical to Complainant’s UNIVISION mark. The disputed domain name includes Complainant’s mark in its entirety and that the addition of the country-code top-level domain (“ccTLD”) “.us” is irrelevant in determining whether the disputed domain name is identical to the mark. Pursuant to Policy ¶ 4(a)(i), the Panel finds that addition of the ccTLD does not distinguish the disputed domain name from Complainant’s mark and that the <univision.us> domain name is identical to Complainant’s UNIVISION mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eRes. Mar. 20, 2000) (refusing to interpret UDRP ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”).
Complainant has proved this element.
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests in the <univision.us> domain name. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent has not presented any evidence demonstrating that it is the owner or beneficiary of a mark which is identical or similar to the disputed domain name. The Panel finds that this satisfies Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
The Panel finds that Respondent is not commonly known by the <univision.us> domain name under Policy ¶ 4(c)(iii). See 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); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply).
Respondent’s use does not evidence rights or legitimate interests in the <univision.us> domain name. Complainant alleges that Respondent has been using the disputed domain name to advertise links to third-party websites unrelated to Complainant’s mark, earning click-through fees for redirecting Internet traffic to those websites. The Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See 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 [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”); see also 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).
Respondent alleges that the registrar, GoDaddy.com, posted the hyperlinks to the parked page. Respondent further contends that it does not receive click-through fees. However, the Panel finds these arguments irrelevant, and holds Respondent responsible for the content posted to the website resolving from the <univision.us> domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”); see also Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”).
Complainant has proved this element.
Registration and Use in Bad Faith
Complainant alleges that Respondent is benefiting from the goodwill associated with the UNIVISION mark by advertising third-party websites and commercially benefiting by receiving click-through fees. The Panel finds that Respondent’s use demonstrates registration and use in bad faith under Policy ¶ 4(b)(iv). See 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 [UDRP] ¶ 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.’”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to UDRP ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Even if Respondent does not receive
click-through fees as Respondent alleges, the Panel finds that the operation of
a parked page constitutes registration and use in bad faith pursuant to Policy
¶ 4(b)(iv). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and
use pursuant to UDRP ¶ 4(b)(iv), regardless of the fact that the respondent was
not earning click-through fees, because “[a]lthough the websites accessed via
the Disputed Domains may be operated by domain parking service providers, that
activity is legally and practically attributable back to Respondent … [t]he key
fact here is that Respondent, in collaboration with the domain parking service
providers, is exploiting Complainant's goodwill.”); see also
The Panel finds that Respondent had actual or constructive knowledge of Complainant’s mark. Respondent’s registration with such knowledge further evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith).
Complainant has proved this element.
Having established all three elements required under the usDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <univision.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 15, 2008
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