Univision Communications Inc. v. Fabian Ciodo
Claim Number: FA1007001337365
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 <univisionhoroscopos.com>, registered with REBEL.COM CORP.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2010.
On July 28, 2010, REBEL.COM CORP. confirmed by e-mail to the National Arbitration Forum that the <univisionhoroscopos.com> domain name is registered with REBEL.COM CORP. and that Respondent is the current registrant of the name. REBEL.COM CORP. has verified that Respondent is bound by the REBEL.COM CORP. 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 July 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@univisionhoroscopos.com by e-mail. Also on July 30, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <univisionhoroscopos.com> domain name is confusingly similar to Complainant’s UNIVISION mark.
2. Respondent does not have any rights or legitimate interests in the <univisionhoroscopos.com> domain name.
3. Respondent registered and used the <univisionhoroscopos.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Univision
Communications Inc., is a Spanish-language media company based in the
Respondent, Fabian Ciodo, registered the <univisionhoroscopos.com> domain name on January 17, 2006. Respondent’s disputed domain name resolves to a website that displays various third-party links to horoscope websites in competition with Complainant’s offerings, as well as links to unrelated websites.
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.
The Panel finds that Complainant has provided sufficient proof that it possesses rights in its UNIVISION mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,624,073 issued Novemeber 20, 1990). Further, the Panel finds that Complainant need not own a trademark registration in Respondent’s country of residence to establish rights under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant contends that the <univisionhoroscopos.com> domain name is confusingly
similar to its UNIVISION mark.
Complainant argues that the disputed domain name contains its UNIVISION
mark entirely while adding the generic term “horoscopos,” which is Spanish for
“horoscopes,” and the generic top-level domain (“gTLD”) “.com.” Complainant contends that such additions to
its mark are not sufficient to distinguish the domain name from its mark. The Panel agrees and finds that Respondent’s <univisionhoroscopos.com> domain name
is confusingly similar to Complainant’s UNIVISION mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum
June 7, 2004) (finding the respondent’s <amextravel.com> domain name
confusingly similar to Complainant’s AMEX mark because the “mere addition of a
generic or descriptive word to a registered mark does not negate” a finding of
confusing similarity under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant has alleged Respondent does not have rights and legitimate interests in the <univisionhoroscopos.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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.”). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights and legitimate interests in the <univisionhoroscopos.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name or Complainant’s UNIVISION mark. The WHOIS information identifies “Fabian Ciodo” as the registrant of the domain name and Respondent has not come forward with evidence indicating that it is commonly known by the disputed domain name. Further, Complainant asserts that it has not authorized Respondent to use its mark in any way and that Respondent is not affiliated with Complainant. Therefore, the Panel finds that Respondent is not commonly known by the <univisionhoroscopos.com> 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 known by the disputed domain name); see also 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).
Complainant contends that Respondent’s disputed domain name
resolves to a website that displays third-party hyperlinks to horoscope
websites in competition with Complainant’s horoscope offerings, as well as
links to unrelated websites. The Panel
finds that Respondent’s use of the disputed domain name to display third-party
links to competing and unrelated websites, presumably for financial gain, is
not a use 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). See Vance
Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the
operation of a pay-per-click website at a confusingly similar domain name does
not represent a bona fide offering of
goods or services or a legitimate noncommercial or fair use, regardless of
whether or not the links resolve to competing or unrelated websites or if the
respondent is itself commercially profiting from the click-through fees); see also Wal-Mart Stores, Inc. v.
Power of Choice Holding Co., FA
621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of
domain names confusingly similar to the complainant’s WAL-MART mark to divert
Internet users seeking the complainant’s goods and services to websites
competing with the complainant did not constitute 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent’s disputed domain name
resolves to a website that displays third-party links to competing horoscope
services. Previous panels have found
that such use of a confusingly similar domain name results in a disruption of
business for complainant, and is evidence of bad faith registration and use
under Policy ¶ 4(b)(iii). The Panel agrees and finds that Respondent’s
use of the disputed domain name to divert Internet users seeking Complainant’s
products and services to the products and services of Complainant’s competitors
is evidence that Respondent registered and used the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also Persohn
v. Lim, FA 874447 (Nat. Arb. Forum
Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶
4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors).
Complainant has also shown that Respondent is using the disputed domain name as a directory website featuring various third-party links to both competing and unrelated websites. The Panel presumes that Respondent receives click-through or affiliate fees in association with such links. Therefore, the Panel finds that Respondent’s use of the disputed domain name to maintain a links directory of competing and unrelated websites, presumably for financial gain, is further evidence of Respondent’s bad faith registration and use under 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 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)).
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 <univisionhoroscopos.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 26, 2010
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