Univision Communications Inc. v. William Littlefield
Claim Number: FA0912001297557
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge
Arciniega, of McDermott Will & Emery LLP,
The domain names at issue are <univisionpictures.com> and <univisionstudios.com>, 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On December 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 2009 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 email@example.com and univisionstudios.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <univisionpictures.com> and <univisionstudios.com> domain names are confusingly similar to Complainant’s UNIVISION mark.
2. Respondent does not have any rights or legitimate interests in the <univisionpictures.com> and <univisionstudios.com> domain names.
3. Respondent registered and used the <univisionpictures.com> and <univisionstudios.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Communications Inc., holds several trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for the UNIVISION mark (e.g., Reg. No. 2,518,239 issued
Littlefield, registered the <univisionpictures.com> and <univisionstudios.com> domain
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 its UNIVISION mark through its
holding of multiple trademark registrations for the UNIVISION mark with the
Reg. No. 2,518,239 issued
Complainant argues that Respondent’s <univisionpictures.com> and <univisionstudios.com> domain
names are confusingly similar to Complainant’s UNIVISION mark pursuant to
Policy ¶ 4(a)(i). Respondent’s disputed
domain names contain Complainant’s UNIVISION mark in its entirety, add the
generic terms “pictures” or “studios”, and add the generic top-level domain
(“gTLD”) “.com.” The Panel finds that
the addition of these generic terms creates a confusing similarity between the
disputed domain names and the Complainant’s mark. See
Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been satisifed.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
WHOIS information lists the registrant as “William Littlefield.” There is no
additional evidence that Respondent is authorized to use Complainant’s
UNIVISION mark for any purpose. Without
evidence to the contrary, the Panel finds that Respondent is not commonly known
by either of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July
7, 2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also
Respondent’s <univisionpictures.com> and <univisionstudios.com>
domain names were registered on February 28, 2008. The disputed domain names resolve to web
directories containing click-through links to various third party websites
unrelated to Complainant. The Panel
finds that Respondent’s use of the disputed domain names is neither a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Constellation Wines
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is attempting to profit from the use of the
confusingly similar disputed domain names and attempting to attract Internet
users to Respondent’s website from which Respondent presumably receives
click-through fees. The Panel finds
Respondent’s use of the confusingly similar disputed domain names to attract
Internet users and profit by creating a strong likelihood of confusion with
Complainant’s UNIVISION mark is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum
June 7, 2006) (holding that the registration and use of a domain name
confusingly similar to a complainant’s mark to direct Internet traffic to a
commercial “links page” in order to profit from click-through fees or other
revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Association of Junior
Leagues Int’l Inc. v. This Domain Name My Be For
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 <univisionpictures.com> and <univisionstudios.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: January 20, 2010
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