Latino Vibe Media LLC v. Domain Name Subject to ICANN UDRP Dispute
Claim Number: FA0806001212302
Complainant is Latino Vibe Media LLC (“Complainant”), represented by William
Schultz, of Merchant & Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <latinovibe.com>, registered with Dotster.
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.
James A. Carmody, Esq., as Panelist.
As of May 26, 2008, the <latinovibe.com> domain name was pending deletion. In accordance with ICANN’s Expired Domain Deletion Policy, Complainant redeemed the <latinovibe.com> domain name on behalf of Respondent.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 25, 2008.
On July 1, 2008, Dotster confirmed by e-mail to the National Arbitration Forum that the <latinovibe.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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").
7, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 28, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 4, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <latinovibe.com> domain name is identical to Complainant’s LATINO VIBE mark.
2. Respondent does not have any rights or legitimate interests in the <latinovibe.com> domain name.
3. Respondent registered and used the <latinovibe.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a bilingual radio station that markets its broadcasts under the LATINO VIBE mark. Complainant claims common law rights in the LATINO VIBE mark since at least 2005, by virtue of its continuous use of the mark in commerce during that time, and specifically, in its broadcasts via territorial and online media across the country and around the world, on its website, and in its engagement with the communities it serves (e.g., its back-to-school drive and its “National Pancake Day” benefitting the Children’s Miracle Network).
The WHOIS record for the <latinovibe.com> domain name reports that the disputed domain name was originally registered on May 25, 2001. The record is unclear as to who registered the disputed domain name on that date, and there is also no evidence as to when Respondent registered the domain name. The disputed domain name resolves to a website that features links that advertises services related to Complainant’s business, and connects Internet visitors to competitors of 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.
In order to have rights in a mark, it is not necessary for
Complainant to have registered the mark. Once Complainant shows sufficient common law
rights in a mark, Complainant can achieve standing under the UDRP. See
For purposes of Policy ¶ 4(a)(i), the Panel finds that Complainant has established common law rights in the LATINO VIBE mark dating back to 2005 through its continuous use of the mark in commerce. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Complainant contends that
Respondent’s <latinovibe.com> domain name is identical to its LATINO VIBE mark. The <latinovibe.com> domain name only differs from Complainant’s mark in that
the space between the words has been removed and the generic top-level domain
(“gTLD”) “.com” has been added. The
removal of the space between words does not sufficiently differentiate a domain
name from a mark for the purposes of Policy ¶ 4(a)(i), and neither does the
addition of a gTLD, because every domain name must contain a top-level
domain. Therefore, the Panel finds that
Respondent’s disputed domain name is not sufficiently distinguished from, and is
identical to, Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <latinovibe.com> domain name. Under Policy ¶ 4(a)(ii), after a complainant makes a prima facie case against a respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known by the <latinovibe.com> domain name nor has it ever been the owner or licensee of the LATINO VIBE mark. Respondent is not identified by any specific name anywhere in the record. This lack of evidence, along with the fact that Respondent has failed to show any evidence contrary to Complainant’s contentions, compels the Panel to find that Respondent is not commonly known by the <latinovibe.com> 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 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 Policy ¶ 4(c)(ii) does not apply).
Respondent maintains a website at the <latinovibe.com> domain name that features links to websites offering the services of Complainant’s competitors. The Panel finds that this use of the <latinovibe.com> domain name 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). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain name to divert Internet customers from Complainant’s website to
Respondent’s website that resolves from the disputed domain name through the
confusion caused by the similarity between the LATINO VIBE mark and the <latinovibe.com> domain name. Complainant also contends that Respondent
intended to disrupt Complainant’s business by diverting confused customers to
Complainant’s competitors. The Panel
finds that Respondent’s use of the disputed domain name disrupts Complainant’s
business, and is evidence of Respondent’s registration and use in bad faith
pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent gains commercially
because of this diversion, both through click-through fees and through the
competing services that Respondent is offering.
The Panel finds that this is an intentional use of the disputed domain
name for commercial gain through a likelihood of confusion with Complainant’s
mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of Respondent’s
registration and use in bad faith.
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 <latinovibe.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 7, 2008
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