Univision Communications Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1201001427381
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <univisiontelenovelas.com>, registered with Registermatrix.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2012; the National Arbitration Forum received payment on January 31, 2012.
On February 6, 2012, Registermatrix confirmed by e-mail to the National Arbitration Forum that the <univisiontelenovelas.com> domain name is registered with Registermatrix and that Respondent is the current registrant of the name. Registermatrix has verified that Respondent is bound by the Registermatrix 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 February 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2012 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@univisiontelenovelas.com. Also on February 8, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <univisiontelenovelas.com> domain name is confusingly similar to Complainant’s UNIVISION mark.
2. Respondent does not have any rights or legitimate interests in the <univisiontelenovelas.com> domain name.
3. Respondent registered and used the <univisiontelenovelas.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Univision Communications Inc., is the owner of the UNIVISION mark, which is a Spanish-language broadcast television network in the U.S. Complainant also owns and operates Univision Radio, Inc. and Univision Interactive Media, Inc. which operates from the <www.univision.com> website. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its UNIVISION mark (e.g., Reg. No. 2,518,239 registered December 11, 2001).
Respondent, PrivacyProtect.org / Domain Admin, has registered the disputed domain name on February 1, 2010. The disputed domain name resolves to a website featuring links to websites that offer products and services that directly compete with Complainant’s business.
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 contends that it has established rights in the UNIVISION mark by registering it with the USPTO (e.g., Reg. No. 1,624,073 registered November 20, 1990). Previous panels have found that registering a mark with a federal trademark authority like the USPTO confers rights in the mark upon the registrant. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); 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). As a result, the Panel finds that Complainant has established rights in the UNIVISION mark through Complainant’s trademark registration pursuant to Policy ¶4(a)(i).
Complainant argues that Respondent’s <univisiontelenovelas.com> domain name is confusingly similar to Complainant’s UNIVISION mark. The disputed domain name includes the generic top-level domain “.com” and the Spanish term for soap operas, “telenovelas.” Complainant is in the television business, and as soap operas or telenovelas are a type of television program, the addition of the term actually increases confusion rather than relieving it. Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s UNIVISION mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Am. Online, Inc. v. Villanueva, FA 236589 (Nat. Arb. Forum April 2, 2004) (“The addition of the generic French and Spanish words is insufficient to distinguish the domain names from Complainant’s marks.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant has successfully shifted the burden of proof to Respondent according to Policy ¶ 4(a)(ii) by making what the Panel finds is a prima facie case that indicates a lack of rights or legitimate interests in the disputed domain name on the part of Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Respondent, however has failed to file a Response in this matter, which allows the Panel to assume that it lacks rights or legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel will nevertheless examine the entire record and address Respondent’s rights or legitimate interests in the disputed domain name within the discrete guidelines provided by Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. In light of the WHOIS information, which identifies the registrant of the domain as “PrivacyProtect.org / Domain Admin,” and the lack of contrary evidence on the record, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); 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).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a directory website offering links to third parties. Some of the links offered resolve to companies that offer television and video services online. Because Complainant also offers television services, these linked companies are competitors of Complainant. At the bottom of the website offered by Respondent there is a notice to Internet users that they have arrived at a parked page. Complainant states, and the Panel agrees, that regardless of whether the page is parked or not, Respondent is still liable for the content provided. Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii) even in light of Respondent’s parking of the website. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this 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).”); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).
Complainant also argues that the inclusion of a passive offer to sell the disputed domain name on the website to which it resolves further indicates that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent’s disputed domain name resolves to a website that offers a link claiming that the owner of the disputed domain may be willing to sell it. The Panel finds that Respondent’s willingness to dispose of its rights in the domain demonstrates that it lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith based upon its general offer to sell the domain. The website to which the disputed domain name resolves offers a links that states that owner of the domain may be willing to sell it to an interested buyer. Previous panels have held that offering a disputed domain name for sale, even in this context, is evidence of bad faith. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel determines that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant also contends that Respondent is gaining commercially from the disputed domain name, constituting bad faith registration and use. The disputed domain name uses Complainant’s mark to attract and confuse Internet users and then resolves to a website that offers, inter alia, links to third-party businesses, some of which offer Spanish language video and television. Respondent presumably generates revenue by collecting a small click-through fee for each Internet user diverted to one of the linked sites. Also, the website includes a notice letting Internet users know that they have arrived at a parked page, which the Panel deems immaterial for the purpose of attributing fault for this use. Thus, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because it is gaining commercially from the confusingly similar domain name. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant also contends that in light of the fame and notoriety of Complainant's UNIVISION mark, it is inconceivable that Respondent could have registered the <univisiontelenovelas.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel agrees with Complainant’s argument that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <univisiontelenovelas.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 15, 2012
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