national arbitration forum

 

DECISION

 

Univision Communications Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin

Claim Number: FA1211001470151

PARTIES

Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of c/o McDermott Will & Emery LLP, California, USA.  Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <univision33.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2012; the National Arbitration Forum received payment on November 7, 2012.

 

On November 7, 2012, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <univision33.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names.  PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@univision33.com.  Also on November 9, 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 December 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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

Complainant contends as follows:

 

Complainant, Univision Communications, Inc. is the premiere Spanish-language media company in the United States. Its portfolio includes television, radio, Internet, and mobile offerings that entertain, inform, and educate more Hispanics each day than any other media company in the country.

 

Complainant owns and shows evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the UNIVISION mark (e.g., Reg. No. 1,624,073, registered November 20, 1990). Complainant also owns various trademark registrations in numerous other countries throughout the world.

 

The <univision33.com> domain name was registered on December 23, 2005, long after Complainant’s rights in the UNIVISION mark had already been established.

Respondent’s <univision33.com> domain name is confusingly similar to Complainant’s UNIVISION mark because it contains Complainant’s entire mark while adding the generic numbers “33,” which may signify KTVW Univision 33 (Univision’s owned and operated television station in Phoenix, Arizona). Further, the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish Respondent’s domain name from Complainant’s mark.

 

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent is not commonly known by the disputed domain name, where the WHOIS record lists “Private Registrations Aktien Gesellschaft” as the registrant.

 

Complainant has never authorized Respondent to register or use Complainant’s UNIVISION mark as part of any domain name.

 

Respondent is using the disputed domain name to connect to a web directory with links to various third-party websites.

 

Respondent has registered and is using the disputed domain name in bad faith.

 

Respondent had both actual and constructive knowledge of Complainant’s mark at the time of the registration of the disputed domain name, based on the notoriety of Complainant’s UNIVISION mark and the fact that Complainant’s mark had been registered with the USPTO.

 

Respondent is using the disputed domain name to redirect Internet users to a web directory featuring links to third-party websites unrelated to Complainant, for which Respondent presumably earns “click-through” or “referral” fees. Respondent has registered the disputed domain name with the intent to create confusion and false association with Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns trademark registrations with the USPTO for its UNIVISION trademark. Complainant also owns trademark registrations for UNIVISION and related marks in numerous other jurisdictions throughout the world.

 

Respondent is not authorized to use Complainant’s trademark.

 

Respondent registered the at-issue domain name after Complainant acquired rights in the UNIVISION mark.

 

Respondent is using the at-issue domain name to address a webpage that displays links to various third-party websites, related and 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.

 

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

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant demonstrates its rights in the UNIVISION mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. It is insignificant that Respondent may be located outside of the jurisdiction where the mark is registered.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

Respondent’s <UNIVISION33.COM> domain name is confusingly similar to Complainant’s UNIVISION mark pursuant to Policy ¶4(a)(i). The at-issue domain name contains Complainant’s mark entirely while adding the generic number “33.”  The fact that the concatenated number may signify Complainant’s KTVW Univision 33 affiliate adds to the confusion rather than serve to distinguish the at-issue domain name from Complainant’s mark. See Univision Communications Inc. v George Magda, FA 1008001339346 (Nat. Arb. Forum September 28, 2010) (holding that Respondent’s <univisiondenver.com> domain name is confusingly similar to Complainant’s UNIVISION mark); see also Univision Communications Inc. v. Cayman Ninety Business, Domain Administrator, FA1007001337367 (Nat. Arb. Forum Aug. 30, 2010) (finding the domain univisionnoticias.com to be confusingly similar to Complainant’s UNIVISION.COM mark, because “adding a descriptive word to Complainant’s mark does not distinguish the disputed domain name sufficiently to prevent confusing similarity under Policy ¶ 4(a)(i)”) Additionally, it is well settled that the the top level domain name, here “.com,” is insignificant to the Panel’s analysis. 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).

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.

 

WHOIS information identifies “Private Registrations Aktien Gesellschaft” as the registrant of the disputed domain name and there is no evidence before the Panel which suggests that Respondent is nevertheless known by the at-issue <univision33.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See 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).

 

Respondent is using the disputed domain name to address a webpage that displays links to various third-parties that are related to, or perhaps competitors of, Complainant such as “Live News,” “Current News,” and “International News.” The webpage also contains links to unrelated third-parties, as well. Respondent’s use of the at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Univision Communications Inc. v. Cayman Ninety Business, Domain Administrator, FA1007001337367, (Nat. Arb. Forum Aug. 30, 2010) (“The Panel finds that a listing of pay-per-click links, without other evidence of rights and legitimate interests, is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also, Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).

 

Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at‑issue domain name was registered and is being used in bad faith. As discussed below, a Policy ¶4(b) bad faith circumstance is present and there is non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

As mentioned above, Respondent is using the at-issue domain name to redirect Internet users to a webpage featuring links to third-parties related, and unrelated, to Complainant. There is little doubt that Respondent earns “click-through” or “referral” fees when a visitor utilizes such links. Respondent’s use of the confusingly similar domain name in this way shows that Respondent registered the at-issue domain name with the intent to create confusion and false association with Complainant. These circumstances further indicate that Respondent is using the disputed domain name to attract Internet users for its own commercial gain, and thus demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See 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.’”).

 

Moreover, Respondent was undoubtedly aware of Complainant’s UNIVISION mark when it registered the <univision33.com> domain name. Complainant and its UNIVISION trademarks are very well known in the field of broadcasting and otherwise. Respondent’s use of the domain name to address a webpage with links to related third parties further suggests that Respondent had prior knowledge of Complainant and its UNIVISION mark. Indeed, there is no plausible explanation as to why Respondent registered the confusingly similar domain name except to trade on Complainant’s mark. Registering a domain name with prior knowledge of another rights therein indicates bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant’s magazine covers an industry towards which Respondent’s services are marketed).

 

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 <univision33.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated:  December 13, 2012

 

 

 

 

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