Univision Communications Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1202001429880
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <elgordoylaflaca.com>, registered with Internet.bs 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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 21, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <elgordoylaflaca.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 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@elgordoylaflaca.com. Also on February 28, 2012, 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 March 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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
1. Complainant, Univision Communications, Inc., began using the EL GORDO Y LA FLACA mark on May 7, 1998.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its EL GORDO Y LA FLACA mark (e.g., Reg. No. 2,361,616 registered June 27, 2000).
3. Respondent registered the disputed domain name no earlier than May 2, 2002.
4. The disputed domain name is confusingly similar to Complainant’s EL GORDO Y LA FLAKA mark.
5. The disputed domain name is identical to Complainant’s mark.
6. Respondent does not have any rights or legitimate interests in the disputed domain name.
7. There is no indication that Respondent is commonly known by the disputed domain name.
8. There is neither a bona fide offer of goods or services nor a legitimate noncommercial or fair use.
9. Respondent has registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Univision Communications, Inc., is a premier Spanish-language media company in the United States and its portfolio includes television, radio, internet and mobile offerings. Complainant has been using the EL GORDO Y LA FLACA mark in U.S. commerce in connection with a recurring popular celebrity gossip-themed television program since May 1998. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its EL GORDO Y LA FLACA mark (e.g., Reg. No. 2,361,616 registered June 27, 2000). Respondent registered the disputed domain name no earlier than May 2, 2002.
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.”).
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its EL GORDO Y LA FLACA mark (e.g., Reg. No. 2,361,616 registered June 27, 2000). The Panel finds that Complainant has established rights in the EL GORDO Y LA FLACA mark pursuant to Policy ¶ 4(a)(i) through its trademark registration with the USPTO. 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 Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to 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).
The Panel also finds that Complainant owns common law rights in its EL GORDO LA FLACA mark under Policy ¶4(a)(i) dating back to May 1998. See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s disputed domain name is identical to Complainant’s EL GORDO Y LA FLACA mark. The Panel notes that the disputed domain name is identical to Complainant’s mark with the addition of the generic top-level domain (“gTLD”) “.com” and the elimination of spaces between words. Based on these alterations, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s EL GORDO Y LA FLACA mark pursuant to Policy ¶ 4(a)(i). See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).
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.”).
Complainant claims that Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent is not authorized or licensed to use its EL GORDO Y LA FLACA mark. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant).
Complainant argues that Respondent uses the parked disputed domain name to resolve to a website showing a web directory with links to various third-party websites. The Panel notes that these links are pay-per-click links. Therefore, the Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for competing products and services of unrelated third parties 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Complainant alleges that Respondent’s disputed domain name resolves to a website containing links to third-party websites, some of which compete with Complainant. The Panel finds that this activity disrupts Complainant’s business, as Internet users seeking Complainant’s site will be diverted to sites featuring competing products. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors shows bad faith registration and use under 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 Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant contends that Respondent is using the disputed domain name to redirect Internet users to a web directory featuring links to third-party websites unrelated to Complainant, and Respondent presumably earns pay-per-click fees for redirecting traffic to those sites. Complainant also argues that many of the third party links on Respondent’s disputed website reference and compete with Complainant. The Panel finds that Respondent is attempting to commercially gain from Internet user confusion as to Complainant’s affiliation with the disputed domain name; therefore, Respondent registered and uses the disputed domain name in bad faith 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 Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
Complainant also contends that, in light of the fame and notoriety of Complainant’s EL GORDO Y LA FLACA mark, it is inconceivable the Respondent could have registered the disputed domain name without actual or constructive knowledge. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. The Panel concludes 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <elgordoylaflaca.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 11, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page