Univision Communications Inc. v. William Vaughan c/o Smtm investments
Claim Number: FA0803001172977
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 <univision34.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 1, 2008.
On March 31, 2008, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the National Arbitration Forum that the <univision34.com> domain name is registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the name. Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.com 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 April
2, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 22, 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@univision34.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 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is the leading
Spanish-language media company in the
Complainant offers Spanish-language
programming through many different media, including television, radio, music,
and on the Internet.
Complainant’s television
network is the leading Spanish-language broadcast network in the U.S. and
reaches 99% of all U.S. Hispanic television households, including through its
flagship station in Los Angeles on channel 34 in that market.
Complainant holds numerous
registered trademarks with the United States Patent and Trademark Office
(“USPTO”) for the UNIVISION mark (including Reg. No. 1,624,073, issued Nov. 20,
1990).
Respondent registered the <univision34.com> domain name on November 26, 2005.
Respondent is not commonly known by the <univision34.com> domain name.
Complainant has never authorized Respondent to register or use its UNIVISION mark in a domain name, and Complainant is not affiliated, connected, or associated with Respondent in any way.
Respondent uses the disputed domain name to display hyperlinks to websites that are unrelated to Complainant’s business.
Respondent receives referral or “click-through” fees for each Internet user redirected to those websites.
Respondent’s <univision34.com> domain name is confusingly similar to Complainant’s UNIVISION mark.
Respondent does not have any rights to or legitimate interests in the <univision34.com> domain name.
Respondent registered and uses the <univision34.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
The first requirement that Complainant must meet under
Policy ¶ 4(a)(i) is to show that it has rights to its
asserted mark. Under the Policy,
registration of a mark with an appropriate governmental authority confers
rights in that mark on a complainant. In
the case before us, Complainant has demonstrated USPTO trademark registration
for the UNIVISION mark. Therefore,
Complainant has satisfactorily shown that it has rights to the UNIVISION mark
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.”
Under Policy ¶ 4(a)(i), Complainant must also prove that the disputed domain name is identical or confusingly similar to the mark in which it has rights. In this instance, Complainant alleges that Respondent’s <univision34.com> domain name is confusingly similar to its UNIVISION mark. The disputed domain name contains Complainant’s mark in its entirety, and merely adds the number “34” as well as the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the addition of a number to a mark does not negate a claim of confusing similarity under the Policy. See, for example, Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001), where a panel held that the <omnitel2000.com> domain name was confusingly similar to a complainant’s OMNITEL trademark.
Here the number “34” is not merely a generic addition to the
mark, but one related to Complainant’s business because there is no dispute as
to Complainant’s allegation that this number is the channel number of its
flagship station in
Finally, it is widely accepted that the addition of a gTLD is irrelevant under the Policy because all domain names are required to have a top-level domain. 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.
Accordingly, we conclude that the <univision34.com> domain name is confusingly similar to Complainant’s UNIVISION mark pursuant to Policy ¶ 4(a)(i).
With respect to Policy ¶ 4(a)(ii), Complainant has the initial burden of making out a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name. Once Complainant makes out its prima facie case, however, the burden effectively shifts to Respondent to demonstrate that such rights or legitimate interests nonetheless exist. The allegations of the Complaint are sufficient to make out a prima facie case that Respondent lacks rights and legitimate interests in the <univision34.com> domain name. The burden therefore has shifted to Respondent. But Respondent has failed to respond to the Complaint. We may therefore presume that Respondent lacks rights to and legitimate interests in the <univision34.com> domain name. See 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).
See also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
However, we elect to examine the record against the parameters of Policy ¶ 4(c) before making a final determination as to Respondent’s rights or legitimate interests, if any.
Complainant asserts that Respondent is not commonly known by the <univision34.com> domain name. Respondent does not deny this allegation. Indeed the pertinent WHOIS information identifies Respondent as “William Vaughan c/o Smtm investments,” which does not resemble the disputed domain name. In RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001), a panel declared that Policy ¶ 4(c)(ii) “require[s] a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail” under that provision of the Policy. Likewise, a panel decision in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) concluded that a respondent’s WHOIS information is a factor to be taken into account in determining whether a respondent has satisfied Policy ¶ 4(c)(ii). Moreover, Complainant further contends that it has never authorized Respondent to register or use its UNIVISION mark in a domain name, and alleges that it is not affiliated, connected or associated with Respondent in any way. Respondent’s failure to respond to these allegations requires us to conclude that Respondent is not commonly known by the <univision34.com> domain name. See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003), where a panel stated that without demonstrable evidence to support the assertion that a respondent was commonly known by a domain name, the assertion must be rejected.
Notwithstanding that Respondent has failed to establish rights or interests in its domain name Policy ¶ 4(c)(ii), it might still demonstrate that it has rights to or legitimate interests in the disputed domain name by showing that it has used the disputed domain name in connection with 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). There is, however, no evidence in the record to support such a conclusion. In particular, Complainant has shown, and Respondent has not denied, that Respondent uses the <univision34.com> domain name to display a list of hyperlinks unrelated to Complainant’s business. Complainant also alleges that Respondent earns referral or “click-through” fees for each Internet user redirected to those websites. Using a domain name to display hyperlinks for click-through fees, thereby profiting from the goodwill associated with a complainant’s mark, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. Therefore, Respondent’s use of the <univision34.com> domain name is inconsistent with Policy ¶¶ 4(c)(i) and (iii), and fails to evidence rights or legitimate interests in Respondent under the Policy. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a complainant’s mark to attract Internet users to its own website, which contained hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of disputed domain names); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that a respondent’s website, which is blank but for links to other websites, is not a legitimate use of domain names).
For these reasons, Complainant has satisfied the
requirements of Policy ¶ 4(a)(ii).
Complainant’s undenied allegations closely match the provisions of Policy ¶ 4(b)(iv), which recites that bad faith registration and use of a domain name may be shown by evidence that:
[B]y
using the domain name, [a respondent has] intentionally attempted to attract,
for commercial gain, Internet users to …[its]… web
site or other on-line location, by creating a likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of …[the respondent’s]… web site or location or of a product or service on …[the
respondent’s]… web site or location.
In displaying hyperlinks to unrelated websites, Respondent
creates confusion as to the source, sponsorship, affiliation, or endorsement of
the unrelated websites and businesses advertised. Further, Respondent’s presumed collection of
referral or click-through fees from such activity demonstrates that it is gains
commercially from such confusion. Therefore,
we conclude that Respondent’s registration and use of the <univision34.com> domain name
constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its
diversionary use of a complainant's mark where a domain name resolves to
commercial websites and that respondent fails to contest a complaint, it may be
concluded that that respondent registered and uses the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also Am. Univ. v. Cook, FA 208629 (Nat.
Arb. Forum Dec. 22, 2003):
Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.
Complainant has thus satisfied the requirements of Policy ¶
4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <univision34.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 6, 2008
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