national arbitration forum

 

DECISION

 

Univision Communications Inc. v. Bladimir Boyiko

Claim Number: FA1202001429870

 

PARTIES

Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA.  Respondent is Bladimir Boyiko (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <despiertaamerica.com>, registered with Enom, Inc.

 

PANEL

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2012; the National Arbitration Forum received payment on February 16, 2012.

 

On February 16, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <despiertaamerica.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 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@despiertaamerica.com.  Also on February 21, 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 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant alleges:

    1. Complainant owns the DESPIERTA AMERICA mark and uses it for a morning variety, talk, news, and community service television program.
    2. Complainant began using the mark in April 1997.
    3. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”), the Canadian Intellectual Property Office (“CIPO”), the Ecuadorian Institute of Intellectual Property (“EIIP”), the Mexican Institute of Industrial Property (“MIIP”), and the Spanish Patent and Trademark Office (“SPTO”), among others, for its DESPIERTA AMERICA mark:

 

Trademark Authority        Reg. No.                  Reg. Date

USPTO                                  2,202,092                  November 3, 1998

CIPO                                      TMA615774              July 27, 2004

EIIP                                        1,150                          May 22, 1998

MIIP                                        573,314                      March 27, 1998

SPTO                                     2,100,620                  December 5, 1997

 

    1. Respondent’s <despiertaamerica.com> domain name is identical to Complainant’s DESPIERTA AMERICA.
    2. Respondent is not commonly known by the <despiertaamerica.com> domain name.
    3. Respondent parks the <despiertaamerica.com> domain name at <usseek.com>, which contains third-party hyperlinks unrelated to Complainant.
    4. Respondent receives click-through fees from that arrangement.
    5. Respondent had actual and constructive knowledge of Complainant’s rights in the DESPIERTA AMERICA mark.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

 

1. Complainant is the premier Spanish-language media company in the USA. It operates the popular Univision Network including, since 1997, a morning variety, talk, news and community service television program named Despierta America, which is the most watched Spanish-language morning television program in the USA.

 

2. Complainant holds extensive trademark registrations for DESPIERTA  AMERICA including the trademark registered  No. 2,202,092  with the United States Patent and Trademark Office (“USPTO”) on November 3, 1998 for DESPIERTA  AMERICA .

 

 

3. Respondent registered the <despiertaamerica.com> domain name on October 28, 2000. It resolves to the website <usseek.com>, which contains third-party hyperlinks unrelated to Complainant.

 

DISCUSSION

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."

 

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.

 

 

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.”).

 

Identical and/or Confusingly Similar

 

In order to establish rights in its DESPIERTA AMERICA mark, Complainant presents the Panel with evidence of its trademark registrations for the mark with multiple national trademark authorities:

 

Trademark Authority        Reg. No.                  Reg. Date

USPTO                                  2,202,092                  November 3, 1998

CIPO                                      TMA615774              July 27, 2004

EIIP                                        1,150                          May 22, 1998

MIIP                                        573,314                      March 27, 1998

SPTO                                     2,100,620                  December 5, 1997

(collectively “the DESPIERTA AMERICA mark”).

 

The Panel accepts the evidence of Complainant in that regard and finds on the basis of that evidence that Complainant has rights in the DESPIERTA AMERICA mark

 

Although Respondent resides in Russia, where Complainant did not provide evidence of a trademark registration, UDRP decisions such as Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), and KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) have held that a complainant need only show evidence of a trademark registration with any national trademark authority and  need not own a trademark registration within Respondent’s country of domicile.  Therefore, the Panel concludes that Complainant owns rights in its DESPIERTA AMERICA mark pursuant to Policy ¶ 4(a) (i).  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).

 

Complainant contends that Respondent’s <despiertaamerica.com> domain name is identical to Complainant’s mark.  In comparing the two, the Panel notes that the disputed domain name only differs from Complainant’s mark by the removal of a space and the addition of the generic top-level domain (“gTLD”) “.com.” Past UDRP panels have found that the removal of a space and the addition of a gTLD failed adequately to distinguish a disputed domain name from a complainant’s mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the respondent’s domain name <charlesjourdan.com> is identical to the complainant’s marks).  Thus, the Panel finds that Respondent’s <despiertaamerica.com> domain name is identical to Complainant’s DESPIERTA AMERICA mark under Policy ¶ 4(a)(i) and that Complainant has made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well-established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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.”).

 

Applying that principle, the Panel finds that Complainant has made out a prima        facie case as required. The prima facie case is based on the following           considerations:

 

(a)  Respondent has chosen as  his domain name Complainant’s DESPIERTA AMERICA mark , which is also the name of Complainant’s television program and has embodied the whole of the mark and the name into the domain name, adding only the generic Top Level Domain “.com”;

 

(b) Respondent has then linked the domain name to a parking site promoting  goods and services unrelated to Complainant , thus giving the false impression to internet users that it is an official domain name of Complainant and that it will lead to an official website of Complainant promoting those goods and services .In this regard, the evidence is that Respondent’s <despiertaamerica.com> domain name is parked at the <usseek.com> website, which contains hyperlinks that resolve to various third-party websites.  The Panel notes that none of the hyperlinks appear to relate to, or compete with, Complainant’s television program.  Complainant contends that Respondent receives click-through fees from these hyperlinks and the Panel finds that that is probably the case.  In Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), and Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003), the panels determined that the use of an identical or confusingly similar domain name to host unrelated hyperlinks did not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.  The Panel agrees and finds that Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <despiertaamerica.com> domain name under Policy ¶ 4(c)(iii); 

 

(c) t he use of Complainant’s DESPIERTA AMERICA mark and name in the manner just described way has clearly been undertaken without the knowledge or approval of Complainant.

 

(d) Moreover, Complainant asserts that Respondent is not commonly known by the <despiertaamerica.com> domain name because there is no evidence in the record to indicate such a fact.  To illustrate this point, Complainant references the WHOIS information, which identifies “Bladimir Boyiko” as the registrant of the disputed domain name.  Complainant also contends that it never authorized Respondent’s use of the DESPIERTA AMERICA mark in the disputed domain name and that Respondent is not affiliated, connected, or associated with Complainant.  The Panel notes that Respondent did not respond to the case against it and did not present any evidence or arguments contradicting Complainant’s assertions.  Based on the evidence in the record, the Panel holds that Respondent is not commonly known by the <despiertaamerica.com> domain name pursuant to Policy ¶ 4(c) (ii).  See 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); 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).

 

As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against him, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant alleges that Respondent registered and uses the <despiertaamerica.com> domain name, which is identical to Complainant’s DESPIERTA AMERICA mark, to redirect Internet users to <usseek.com>, which contains hyperlinks that resolve to unrelated third-party websites.  Complainant contends that Respondent receives click-through or referral fees from the hyperlinks.  Complainant argues that Respondent is profiting from Complainant’s mark and the goodwill associated with the mark.  As the Panel determines that Respondent is attempting by this means to create and profit from Internet user confusion as to Complainant’s affiliation with the domain name by registering an identical disputed domain name and hosting unrelated hyperlinks, the Panel also finds that Respondent registered and has used the <despiertaamerica.com> domain name in bad faith in breach of Policy ¶ 4(b)(iv) .  See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b) (iv)).

 

Secondly, Complainant contends that in light of the fame and notoriety of Complainant's DESPIERTA AMERICA mark, it is inconceivable that Respondent could have registered the <despiertaamerica.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. In this regard it should be said that it is always open to a UDRP panel to draw inferences from the facts as they are known. In the present case the Panel is faced with evidence that Complainant’s DESPIERTA AMERICA mark is an unusual name clearly devised for a specific purpose, that it is associated with Complainant’s television program that is widely known and viewed and that, although the registration of the domain  name calls for some explanation from Respondent, he has declined to do so. From those matters, the Panel draws the inference that Respondent had actual knowledge of the mark and Complainant’s rights in it at the time he registered the domain name and subsequently. This conclusion leads the Panel to find that Respondent registered and used the domain name in bad faith, within the meaning of Policy ¶ 4(b) (iii) and (iv). 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).

 

In addition and having regard to the totality of the evidence, the Panel finds that Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

 

 

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 <despiertaamerica.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC,

Panelist

Dated:  March 22, 2012

 

 

 

 

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