Piolin Productions, Inc. v. Fullforce Mediaservices c/o full force media services
Claim Number: FA1002001307431
PARTIES
Complainant is Piolin Productions, Inc. (“Complainant”), represented by Matthew
A. Stratton, of Harvey Siskind LLP,
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <piolinfans.com> and <piolinfan.com>, registered with 1 & 1 Internet Ag.
PANEL
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 10, 2010.
On February 15, 2010, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <piolinfans.com> and <piolinfan.com> domain names are registered with 1 & 1 Internet Ag and that the Respondent is the current registrant of the name. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 February 25, 2010, at the request of the National Arbitration Forum, Complainant corrected named deficiencies by amending its Complaint, so as to list the Respondent’s name, as it is currently found in the Registrar’s Whois database; so as to list the Respondent’s contact information as currently found in the Registrar’s Whois database; and so as to select an appropriate location of mutual jurisdiction.
On February 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of
March 18, 2010 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@piolinfans.com and postmaster@piolinfan.com by e-mail.
A Response was received on February 26, 2010, that was deemed deficient by the National Arbitration Forum, because it was not received in hard copy prior to the Response deadline.
On
March 30, 2010,
pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Carol M.
Stoner, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the <piolonfans.com> and <piolinfan.com> domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that the marks relied on by Complainant, all of which were used before Respondent registered the domain names at issue, include PIOLIN and PIOLIN POR LA MANANA (the “Piolin Marks”). The Piolin marks are used in connection with entertainment services provided by Eduardo "Piolin” Sotelo, including his radio show entitled “Piolin por la Manana” and his radio personality. These allegations are contained in the Declaration of Eduardo Sotelo, attached as Exhibit C to the Complaint.
Complainant’s rights to the PIOLIN Mark date back to
1989, while its rights to PIOLIN POR LA MANANA date back to 2001. Complainant
has established common law rights in the Piolin Marks since that time through
continuous use in
The <piolinfans.com> and <piolinfan.com> domain names are confusingly similar
to the prior trademark rights that Complainant has established in the Piolin Marks in connection with El Piolin and his radio show “Piolin por la Manana.” Respondent’s disputed marks are formatives followed by the generic word “fans” and “fan” and the generic top level domain “.com.”
Performers can establish trademark rights by showing their use of the names as source indicators in commerce. Thus, they have unregistered or common law rights to protection against misleading use.
Respondent has no rights, nor legitimate interest in the Respondent’s disputed domain names. Respondent does not offer any legitimate goods or services under this mark, nor is it his trade name. Further, the use of the disputed trade name to divert internet users to a commercial website is neither a bona fide offer of goods or services, nor a legitimate non-commercial fair use. Even the limited amount of advertising in the diverted website will defeat his contention that the fan site is protected by the free speech protections of the First Amendment. Furthermore, Complainant has not licensed or authorized Respondent to use its Piolin marks.
Respondent reserved and used the domain names in bad faith, in that the names are confusingly similar to Complainant’s marks and that visitors to the website may believe that the confusingly similar names are related to, or associated with, the Complainant.
Yet, in point of fact, the domain names are a diversionary tactic to siphon off the fame
and goodwill of the long established Piolin Marks. This diversion creates a likelihood
of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, which evidences registration and use in bad faith under Policy ¶4(b)(iv).
B. Respondent
The Respondent alleges that the website is just a fan site – simple as that.
He says that it was never his intention to make one single dollar from it, but to unite
his fans in one website.
He states that the website does not falsely suggest connection at all because it is stated in the website (in Spanish) that “This page does not represent the opinions of Univion or El Show de Piolin.”
Respondent further states that his site contains banner ads because he would need to pay $20.00 per month to have NING, the free website, take them off. He states that he does not want to pay this amount because it is just a fun site.
He concludes his response by saying that “I’m so confused now—So should I cancel both of the domains then?” <piolinfan.com> and <piolinfans.com>?
FINDINGS
(1) The <piolinfans.com> and <piolinfan.com> domain names registered by the Respondent are identical or confusingly similar to Complainant’s PIOLIN and PIOLIN POR LA MANANA servicemarks, in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names have been registered and are being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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:
(3) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(4) the Respondent has no rights or legitimate interests in respect of the domain name; and
(5) the domain name has been registered and is being used in bad faith.
Preliminary Issue #1: Deficient Response
Respondent’s Response was submitted only in electronic format prior to the Response deadline. Although the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5, the Panel, in its authorized discretion, has decided to accept and consider this Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Complainant argues that Respondent’s <piolinfans.com> and <piolinfan.com> domain names are confusingly similar to Complainant’s PIOLÍN mark pursuant to Policy ¶ 4(a)(i), in that they contain Complainant’s mark in its entirety, add the term “fan” or “fans,” remove the accent mark from the “I,” and append the generic top-level domain “.com.” The Panel rules that the mere addition of a generic or descriptive term such as “fan” or “fans” to an identical mark in a disputed domain name creates a confusing similarity between the disputed domain name and the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
In addition, the Panel finds that the omission of accent marks and the addition of a gTLD are insignificant in distinguishing a disputed domain name from a protected mark. See Florentine Caffe, Inc. v. Pfeffer, FA 465152 (Nat. Arb. Forum June 3, 2005) (finding that “[t]he removal of the accent is insignificant under the Policy because it is not possible to reproduce such punctuation in a domain name”); 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.”). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s PIOLÍN Marks.
Complainant does not have a registered trademark for the PIOLÍN Marks. However, the Panel finds that registration is unnecessary pursuant to Policy ¶ 4(a)(i), provided that Complainant can establish common law rights in the mark through a showing of secondary meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant argues
persuasively that it has established common law rights in the PIOLÍN Marks
pursuant to Policy ¶ 4(a)(i) through its history of
continuous use and showing of secondary meaning. Complainant asserts common law rights in the
PIOLÍN mark because it is a personal name that has continuously been used in
Panel finds that
Complainant’s continuous use of the PIOLÍN mark in connection with Eduardo
“Piolín” Sotelo’s widely recognized professional radio broadcasting activities
has created secondary meaning in the PIOLÍN mark, sufficient to establish
common law rights. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that
trademark registration was not necessary and that the name “Julia Roberts” has
sufficient secondary association with the complainant that common law trademark
rights exist); see also Estate of
Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A
person may acquire such a reputation in his or her own name as to give rise to
trademark rights in that name at common law …”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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.”).
Complainant contends that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). Complainant presents the relevant WHOIS information that identifies the registrant of the disputed domain name as “FullForce Mediaservices c/o Full Force Media Services” and cogently argues that there is no evidence in the record to suggest that Respondent is otherwise commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also
presents evidence to show that Respondent’s disputed
domain names resolve to a website that features several hyperlinks to unrelated
third-party websites. The Panel infers
that Respondent receives click-through fees for these hyperlinks. Therefore, the Panel further finds that
Respondent’s use of the disputed domain names do not represent 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 Constellation Wines
Here, Respondent uses the Piolin mark to attract users to its “fan site” in order to boost traffic – and ad revenue – collected with the <piolinfans.com> and <piolinfan.com> domain names. Respondent’s stated intentions to promote the website, resolving from the disputed domain names, merely as a fan site, do not give the Respondent rights and legitimate interests in the disputed domain names. The advertisements on the diverted site, though minimal, were sufficient to taint Respondent’s “free speech” claims, in that, in reality, the advertisements constituted use of Complainant’s marks “in connection with advertising” which is prohibited by the Lanham Act. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (“A fan-club does not exist in a vacuum; it promotes the product for which it is named. … Insofar as a domain name which is identical to a name or mark is used solely in the context of the product of the owner of the name or mark and the owner objects to the use, it is not legitimate.”); see also Van Halen v. Morgan, D2000-1313 (WIPO Dec. 20, 2000) (finding that the respondent’s “expectation of developing a legitimate interest in the domain name,” which was used in connection with a fan-based website, was insufficient to establish rights or legitimate interests in the domain name).
According to Whois information on Complainant’s Exhibit A, Respondent registered the domain name <piolinfans.com> on April 5, 2009 and the domain name <piolinfan.com> on May 16, 2009. These marks are undoubtedly similar to Complainant’s marks. This false association seeks to usurp the fame and goodwill of the Piolin Marks, in violation of the Lanham Act, 15 U.S.C. Sec. 1052, et seq. Respondent, as a “fan” was undoubtedly aware of Complainant’s rights in the Piolin Marks. In accordance with Mr. Sotelo’s declaration in Exhibit C, Mr. Sotelo acquired the nickname “El Piolin” or “Piolin” in 1988 and has since been continuously associated with those names.
Mr. Sotelo is a radio personality who has been in broadcasting since 1988. Since 2001, he has hosted the Spanish language radio show ‘Piolin por la Manana”, which is on the air for six hours per day, five days per week, and four hours per day on Saturday. As the natural consequence of Respondent’s use of the disputed domain names in the stated fashion, is to cause confusion with Complainant, the Panel rules that the use and registration of the disputed domain names are in bad faith.
In accordance with the Declaration of Matthew A. Stratton, attached to the Complaint as
Exhibit D, both the <piolinfans.com> and <piolinfan.com> domain names immediately redirect the viewer to a website located at <piolin.NING.com>. Complainant has provided screenshot evidence that Respondent’s a disputed domain names resolve to a website that displays hyperlinks unrelated to the Respondent. And the Panel is entitled to infer that Respondent receives click-through fees from these hyperlinks.
In summation, Respondent has registered and used the disputed domain names in a cybersquatting fashion. That is, he is hosting the website to generate revenue through referral fees through the exploitative insinuation of Complainant’s famous marks into Respondent’s diversionary and revenue generating domain names.
Accordingly, the Panel finds that Respondent’s
conduct constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v.
This Domain Name My Be For
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <piolinfans.com> and <piolinfan.com> domain names be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner,
Esq., Panelist
Dated: April 13, 2010
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