Univision Communications Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1202001429889
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 <primerimpacto.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.
David A. Einhorn appointed 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 <primerimpacto.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. 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 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@primerimpacto.com. Also on February 24, 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 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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 alleges:
1. Complainant is a Spanish-language media company in the United States.
2. Complainant owns a trademark registration for the PRIMER IMPACTO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,922,574 registered September 26, 1995).
3. Complainant also owns trademark registrations for PRIMER IMPACTO in Bolivia, Canada, Columbia, Costa Rica, the Dominican Republic, Ecuador, El Salvador, Guatemala, Honduras, Nicaragua, Panama and Peru.
4. Complainant uses the PRIMER IMPACTO mark in connection with a Spanish language news and current events television program.
5. The PRIMER IMPACTO television program is hugely popular in the United States and through Latin America.
6. Respondent’s disputed domain name is identical to Complainant’s PRIMER IMPACTO mark.
7. Respondent is not commonly known by the disputed domain name.
8. The disputed domain name resolves to a parked website that contains hyperlinks unrelated to Complainant’s business.
9. Respondent had actual and constructive knowledge of Complainant’s PRIMER IMPACTO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.
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 a USPTO trademark registration for PRIMER IMPACTO (Reg. No. 1,922,574, registered September 26, 1995) and registrations in twelve other countries. While the Panel notes that Respondent resides in Chile, which is not one of the countries in which Complainant has registered its mark, the Panel still concludes that Complainant’s USPTO trademark registration and many foreign registrations are evidence that Complainant holds rights in its PRIMER IMPACTO mark for the purposes of Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant contends that Respondent’s <primerimpacto.com> domain name is identical to Complainant’s PRIMER IMPACTO mark. The Panel finds that the only difference between the two is the removal of a space between the words. Thus, the Panel agrees with Complainant and finds that Respondent’s <primerimpacto.com> domain name is identical to Complainant’s PRIMER IMPACTO mark under Policy ¶ 4(a)(i). See 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).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
According to the Complaint, Respondent is not affiliated, connected, or associated with Complainant, and Complainant did not authorize Respondent’s use of Complainant’s PRIMER IMPACTO mark. The WHOIS information identifies “PPA Media Services / Ryan G Foo” as the registrant of the <primerimpacto.com> domain name, which the Panel notes is not at all similar to the domain name. Thus, the Panel finds that Respondent is not commonly known by the <primerimpacto.com> domain name pursuant to 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).
Complainant asserts that Respondent’s <primerimpacto.com> domain name resolves to a website that hosts hyperlinks resolving to unrelated, third-party websites and that Respondent commercially gains from these hyperlinks by receiving click-through fees. Complainant argues that this parked website is evidence that Respondent is not making a bona fide offering of goods or services or a commercial or fair use of the disputed domain name. Based on, and accepting, the uncontroverted evidence in the record, the Panel finds that Respondent’s use of the disputed domain name to host unrelated hyperlinks is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <primerimpacto.com> domain name. See 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 therefore finds that Policy ¶ 4(a)(ii) has also been satisfied.
Complainant argues that Respondent had constructive knowledge of Complainant’s PRIMER IMPACTO mark by virtue of Complainant’s trademark registrations. Complainant further contends that Respondent had actual knowledge of Complainant’s PRIMER IMPACTO mark based on the notoriety of Complainant’s PRIMER IMPACTO mark and the fact that the disputed domain name is identical to Complainant’s mark. Complainant alleges, and this Panel accepts, that Complainant’s PRIMER IMPACTO Spanish language television program is widely popular in the United States and Latin America. Based on the notoriety of Complainant’s mark in the United States and Latin America, the Panel therefore finds that Respondent , which is located Latin America (specifically, Chile) likely had actual knowledge of Complainant’s PRIMER IMPACTO mark, which constitutes evidence of bad faith registration and use of the <primerimpacto.com> domain name under Policy ¶ 4(a)(iii). See 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”).
Respondent registered and uses the identical <primerimpacto.com> domain name to capitalize on the goodwill associated with Complainant’s PRIMER IMPACTO mark. Respondent apparently also earns a click-through fee each time an Internet user clicks on one of the unrelated hyperlinks. The Panel finds that Respondent is attempting to create, and profit from, Internet user confusion, which therefore constitutes bad faith registration and use of the <primerimpacto.com> domain name pursuant to Policy ¶ 4(b)(iv). See 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)). See also Yahoo! Inc. v. Manage Technical, FA 238649 (Nat. Arb. Forum Apr. 8, 2004) (finding bad faith because “[I]t is well established that when a domain name incorporates a well-known registered mark in a domain name for the purpose of creating Internet-user confusion as to the sponsorship of the name and then uses it for commercial gain, the registrant has registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).”
The Panel therefore finds that Policy ¶ 4(a)(iii) has also 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 <primerimpacto.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 11, 2012
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