Univision Communications Inc. v. Eighty Business Names / Domain Administrator
Claim Number: FA1111001414256
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is Eighty Business Names / Domain Administrator (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <saludesvida.com>, registered with Rebel.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2011; the National Arbitration Forum received payment on November 7, 2011.
On November 7, 2011, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <saludesvida.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 2011 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@saludesvida.com. Also on November 8, 2011, 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 December 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <saludesvida.com> domain name is confusingly similar to Complainant’s SALUD ES VIDA ¡ENTÉRATE! mark.
2. Respondent does not have any rights or legitimate interests in the <saludesvida.com> domain name.
3. Respondent registered and used the <saludesvida.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 whose portfolio includes television, radio, Internet, and mobile offerings. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its SALUD ES VIDA ¡ENTÉRATE! mark (Reg. 3,221,121 filed November 23, 2005; registered March 27, 2007) that it uses in connection with its entertainment services. Complainant claims common law rights in the SALUD ES VIDA ¡ENTÉRATE! mark dating back to December 4, 2001.
Respondent, Eighty Business Names / Domain Administrator, registered the <saludesvida.com> domain name on June 9, 2004. The disputed domain name formerly resolved to a parked directory site featuring links to unrelated third-party websites. The disputed domain name currently fails to resolve to an active website.
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 presents evidence of its trademark registration with the USPTO for its SALUD ES VIDA ¡ENTÉRATE! Mark (Reg. 3,221,121 filed November 23, 2005; registered March 27, 2007). Even though Respondent resides in the Cayman Islands, the Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in its SALUD ES VIDA ¡ENTÉRATE!, dating back to November 23, 2005. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); 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”).
Complainant claims to have used the SALUD ES VIDA ¡ENTÉRATE! mark in connection with the promotion of a public health awareness campaign as early as December 4, 2001. Complainant also submits two news articles about its campaign from November 2003. The articles associate Complainant with the SALUD ES VIDA ¡ENTÉRATE! mark and provide additional evidence of Complainant’s acquisition of secondary meaning in the mark. The Panel finds Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also
Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Complainant argues that the <saludesvida.com> domain name is confusingly similar to the SALUD ES VIDA ¡ENTÉRATE! mark within the meaning of Policy ¶ 4(a)(i). The disputed domain name includes a majority of Complainant’s mark, omitting the term “¡ENTÉRATE!,” while adding the generic top-level domain (“gTLD”) “.com” and deleting the spaces between the words. Previous panels have found that deleting a word from a complainant’s mark is not sufficient to remove a disputed domain name from the realm of confusing similarity. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). Additionally, the deletion of spaces between words and the affixation of a gTLD do not distinguish a disputed domain name under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel concludes, therefore, that the <saludesvida.com> domain name is confusingly similar to the SALUD ES VIDA ¡ENTÉRATE! mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds the elements of Policy ¶ 4(a)(i) to be satisfied.
Policy ¶ 4(c) requires Complainant to first present a prima facie case in order to shift the burden to Respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). In the immediate case, Complainant has satisfied its burden, while Respondent has not. Some panels have viewed this as per se evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). For the sake of fairness, however, the Panel will continue to examine the record to determine whether such rights or legitimate interests do in fact exist under Policy ¶ 4(c).
In alleging that Respondent is not commonly known by the disputed domain name, Complainant states that it has never authorized, licensed, contracted, or otherwise permitted Respondent’s use of the SALUD ES VIDA ¡ENTÉRATE! mark. The relevant WHOIS information identifies the domain name registrant as “Eighty Business Names / Domain Administrator,” which the Panel finds to bear no resemblance to the <saludesvida.com> domain name. Because Respondent has failed to submit a Response, there is no other evidence in the record to support the idea that Respondent is commonly known by the disputed domain name. Based on the foregoing, the Panel must conclude that Respondent is not commonly known by the disputed domain name for the purposes of 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also alleges that Respondent’s former use of the disputed domain name cannot be properly considered 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 disputed domain name resolved to a parked directory site featuring links to unrelated third-party websites. Previous panels have not found this type of use to be consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). The Panel holds that Respondent’s prior use of the disputed domain name does 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).
Complainant asserts that Respondent currently fails to make an active use of the disputed domain name. Prior panels have held that the failure to make an active use of a disputed domain name is evidence that the respondent lacks rights and legitimate interests. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds the elements of Policy ¶ 4(a)(ii) to be satisfied.
Complainant contends that Respondent’s registration and former use of the disputed domain name represents bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). By using a confusingly similar domain name, Respondent creates confusion as to Complainant’s endorsement of, or affiliation with, the disputed domain name. Respondent relied on this confusion to drive traffic to its website, which housed a directory of unrelated hyperlinks. Respondent presumably profited from the operation of its hyperlink directory. The commercial gain Respondent realized, therefore, was dependant on the confusion it created as to Complainant’s affiliation with the disputed domain name in order to increase traffic to the website. The Panel holds that registration and use for this purpose represents bad faith attraction for commercial gain 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)).
Complainant further argues that Respondent currently fails to make an active use of the disputed domain name. The Panel finds that such a failure is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the SALUD ES VIDA ¡ENTÉRATE! mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that Complainant has proven that Respondent has actual knowledge of Complainant's mark and, therefore, that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds the elements of Policy ¶ 4(a)(iii) to be 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 <saludesvida.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 8, 2011
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