Univision Communications Inc. v. Private Whois univisionpr.com
Claim Number: FA1203001432720
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is Private Whois univisionpr.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <univisionpr.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 March 2, 2012; the National Arbitration Forum received payment on March 2, 2012.
On March 4, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <univisionpr.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 March 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@univisionpr.com. Also on March 7, 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 April 6, 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., is a Spanish-language media company operating out of the United States, which offers television, radio, Internet, and mobile entertainment, information, and education services.
2) Complainant owns rights in the UNIVISION mark through its several registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,624,073 registered November 20, 1990), as well as registrations with other international trademark authorities.
3) Respondent, Private Whois, registered the <univisionpr.com> domain name on November 5, 2005.
4) Respondent’s disputed domain name is confusingly similar to the UNIVISION mark.
5) Respondent is not associated with Complainant has no license to use its mark in any way.
6) Respondent’s domain name corresponds to a website that redirects Internet users to websites in a prize promotion scam, for which Respondent earns referral fees.
7) Respondent uses the disputed domain name to create confusion and false association with Complainant, which is evidence of bad faith.
8) Respondent had actual and constructive knowledge of Complainant’s mark at the time of its registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Univision Communications, Inc., is a Spanish-language media company operating out of the United States, which offers television, radio, Internet, and mobile entertainment, information, and education services.
Complainant owns rights in the UNIVISION mark through its several registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,624,073 registered November 20, 1990), as well as registrations with other international trademark authorities. Respondent, Private Whois, registered the <univisionpr.com> domain name on November 5, 2005. Respondent’s domain name corresponds to a website that redirects Internet users to websites in a prize promotion scam, for which Respondent earns referral fees.
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 has rights in the UNIVISION mark under Policy ¶ 4(a)(i) as a result of its several registrations of the mark with the USPTO (e.g., Reg. No. 1,624,073 registered November 20, 1990). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks 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)). Under Policy ¶ 4(a)(i), Complainant is not required to register its mark in the same country where Respondent resides and operates. 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); 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).
Complainant argues that the <univisionpr.com> domain name is confusingly similar to its UNIVISION mark and asserts that adding the generic letters “pr,” as well as the generic top-level domain (“gTLD”) “.com,” does not serve to adequately alter the domain name from the mark. Complainant alleges that the added letters “pr” may signify “Puerto Rico,” Complainant’s affiliate, or “public relations.” The panel in Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002), found that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.” Similarly, the panel in Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000), held that the <kelsonmd.com> was identical or confusingly similar to the complainant’s federally registered service mark, KELSON despite the addition of two letters. In Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) the panel held that the addition of a gTLD does not serve to adequately distinguish the Domain Name from the mark. The Panel determines that the disputed domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
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 contends that Respondent is not commonly known by the <univisionpr.com> domain name and submits evidence showing that the WHOIS record identifies the domain name registrant as “Private Whois.” Complainant also alleges that it has never authorized Respondent to use the UNIVISION mark. Complainant asserts that there is no affiliation, connection or association between Respondent and Complainant. The Panel finds that, based on the WHOIS evidence and Complainant’s assertions, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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 argues that Respondent is not using the <univisionpr.com> domain name in a manner demonstrating a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant further alleges that Respondent is using the disputed domain name to automatically redirect Internet traffic to a web page that contains only a “Congratulations!” message that tells the Internet user it is a winner, directs the Internet user to select a prize and enter its email address, and then subsequently redirects the user to another website where the prize can be chosen. Complainant characterizes Respondent’s website as a click-through redirection website. In Victoria’s Secret Stores Brand Mgmt., Inc. v. Private Whois Serv., FA 1395837 (Nat. Arb. Forum Aug. 12, 2011), the panel found that using the disputed domain name to redirect Internet users to a website offering prizes in exchange for providing personal information was not consistent with Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). In WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003), the panel determined that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark 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. The Panel therefore finds that Complainant’s use of the disputed domain name to operate a “prize promotion scam” and a “click-through redirection site” 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 argues that Respondent uses the <univisionpr.com> domain name to attract Internet traffic to its website purportedly offering prizes in order to collect referral fees for redirecting Internet users to other websites. Complainant alleges that by using a confusingly similar domain name, Respondent creates consumer confusion as to the association between Complainant’s business and the disputed domain name from which Respondent makes a profit. The Panel finds that Respondent’s use of the domain name to confuse consumers, attract Internet traffic, and profit from a false association with Complainant amounts to bad faith registration and use under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Complainant asserts that, due to its vast list of national and international trademark registrations, Respondent had constructive knowledge of Complainant's rights in the UNIVISION mark when Respondent registered the <univisionpr.com> domain name. Previous panels have concluded that constructive knowledge of a mark is not enough to make a finding of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel finds, however, that Respondent had actual knowledge of the UNIVISION mark and registered the <univisionpr.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's 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 <univisionpr.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 19, 2012
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