Univision Communications Inc. v. Rusty Nailor
Claim Number: FA1002001308891
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 <republicadeportiva.com>, registered with Enom, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 22, 2010.
On February 19, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <republicadeportiva.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 22, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 15, 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@republicadeportiva.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2010, 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 <republicadeportiva.com> domain name is identical to Complainant’s REPUBLICA DEPORTIVA mark.
2. Respondent does not have any rights or legitimate interests in the <republicadeportiva.com> domain name.
3. Respondent registered and used the <republicadeportiva.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Univision Communications Inc., has registered its REPUBLICA DEPORTIVA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,554,498 issued December 30, 2008; filed April 5, 1999). Complainant has used its mark in commerce since April 11, 1999, and filed its USPTO registration application on April 5, 1999. Complainant uses the mark in connection with a Spanish-language sports variety show on public television, featuring sports news, interviews, bloopers, and entertainment surrounding famous athletes.
Respondent, Rusty Nailor, registered the disputed domain name May 1, 2000. The disputed domain name resolves to a web directory that contains links to third-party websites unrelated to the 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.
Complainant asserts it has rights in its REPUBLICA DEPORTIVA mark due to its registration with the USPTO (Reg. No. 3,554,498 issued December 30, 2008, filed April 5, 1999). The Panel finds that Complainant’s registrations of its REPUBLICA DEPORTIVA mark with the USPTO are sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Complainant’s trademark registration application for the REPUBLICA DEPORTIVA mark was subsequently approved by the USPTO. Therefore the Panel finds Complainant’s rights in the registered mark date back to Complainant’s trademark registration filing date of April 5, 1999, which predates Respondent’s disputed domain name registration on May 1, 2000. The Panel finds that the relevant date to be considered for Complainant’s rights in the mark under Policy ¶ 4(a)(i) is the filing date of the trademark registration. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case in support of these allegations, the burden to establish that it has rights or legitimate interests in the disputed domain name shifts to the Respondent pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case in support of its complaint, shifting the burden to the Respondent. In light of Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record in light of Policy ¶ 4(c). See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4 (a)(ii) of the Policy.”); see also G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”)
The WHOIS information for the <republicadeportiva.com> domain name lists “Rusty Nailor” as the registrant, which indicates that Respondent is not commonly known by the disputed domain name. Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Furthermore, Complainant asserts Respondent is not licensed or otherwise authorized to use the REPUBLICA DEPORTIVA mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4 (c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly know by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The disputed domain name resolves to a web directory that
contains links to third-party websites unrelated to the Complainant. The Panel
finds Respondent’s use of the <republicadeportiva.com>
domain name is not 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 Constellation Wines
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
The
disputed domain name resolves to a web directory that contains links to
third-party websites unrelated to the Complainant. Internet users, interested
in Complainant and Complainant’s related products, may become confused as to
Complainant’s sponsorship and affiliation of the resolving website. Respondent
attempts to profit from this confusion by presumably earning referral fees for
redirecting traffic to third-party websites. The Panel finds Respondent’s
registration and use of the <republicadeportiva.com>
domain name creates a likelihood of confusion with the Complainant’s mark and
qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum
June 11, 2006) (holding that the respondent’s previous use of the
<bankofamericanfork.com> domain name to maintain a web directory was
evidence of bad faith because the respondent presumably commercially benefited
by receiving click-through fees for diverting Internet users to unrelated
third-party websites) see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum
May 19, 2006) (holding that the respondent registered and used the
<myspacebot.com> domain name in bad faith by diverting Internet users
seeking the complainant’s website to its own website for commercial gain
because the respondent likely profited from this diversion scheme).
The Panel finds 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 <republicadeportiva.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 6, 2010
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