Univision Communications Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1312001536966
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <univisionmobile.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2013; the National Arbitration Forum received payment on December 31, 2013.
On January 1, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <univisionmobile.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. 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 January 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2014 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@univisionmobile.com. Also on January 2, 2014, 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 January 24, 2014, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the UNIVISION mark to identify its Spanish-language media company, which offers news, educational, and entertainment content through television, radio, internet and mobile offerings.
Complainant owns rights in the UNIVISION mark through registrations of the mark with various trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,624,073 registered November 20, 1990).
The <univisionmobile.com> domain name is confusingly similar to Complainant’s UNIVISION mark because the domain name fully appropriates the mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.com” and the generic term “mobile.”
Nothing in the WHOIS information indicates that Respondent is commonly known as “univision mobile.” The <univisionmobile.com> domain name resolves to a parked website promoting links to various third-party websites.
The <univisionmobile.com> capitalizes on Complainant’s well-known UNIVISION mark for Respondent’s commercial profit. Given the notoriety of Complainant’s UNIVISION mark, it is inconceivable that Respondent registered the <univisionmobile.com> domain name without notice of Complainant’s rights in the mark. Respondent’s inactive holding of the disputed domain name evidence Respondent’s bad faith under the Policy.
Respondent registered the disputed domain name on January 18, 2007.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for UNIVISION mark as well as other registrations for such mark worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use the UNIVISION mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in UNIVISION.
Respondent uses the <univisionmobile.com> domain name to address a parking page promoting links to various third-party websites.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates that it has rights in a mark for the purposes of the Policy by virtue of its USPTO registration for the UNIVISION mark. Such rights also flow from Complainant’s other registrations for the UNIVISION and related trademarks worldwide. For the purposes of Policy ¶4(a)(i), it is irrelevant that Respondent may operate outside the jurisdiction of the relevant trademark registrars. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that its is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The at-issue domain name contains Complainant’s UNIVISION mark in its entirety, suffixes the generic term “mobile” to the mark, and appends the top level domain name, “.com,” thereto. Notably, the Complainant also holds registrations for UNIVISION.COM and UNIVISION MOVIL (Univision Mobile in English). The later has a similar sound and an identical meaning to Respondent’s second level domain name; the former includes “.com” which is mimicked by the top level of Respondent’s <univisionmobile.com> domain name. The differences between the Complainant’s marks and the at-issue domain name fail to distinguish the two under Policy ¶4(a)(i). Therefore the Panel concludes that the at-issue <univisionmobile.com> domain name is confusingly similar to Complainant’s UNIVISION trademarks. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“… the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also, Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark).
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 affirmative 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 and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
The WHOIS information for the at-issue domain name identifies Respondent as “Domain Admin / Private Registrations Aktien Gesellschaft” and the record before the Panel contains no evidence that might otherwise tends to prove that Respondent is commonly known by the at-issue domain name notwithstanding the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <univisionmobile.com> domain name for the purposes of 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 uses the <univisionmobile.com> domain name to host a parked webpage promoting links to various third party websites and is responsible for the content associated with its domain name even where, such as here, the at-issue domain name resolves to a parking page. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). The links on the <univisionmobile.com> webpage are placed under the headings of “Ads” and “Related Links” and include references to <premiumcarebathing.com>, <my-tv-episodes.com>, and <1800flowers.com>. Some of the links reference businesses that compete with Complainant. Further, the links likely deliver pay-per-click fees either to Complainant, or a third party. Respondent’s use of the <univisionmobile.com> domain name in this manner is neither a bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor a legitimate or fair use of the domain name under Policy ¶¶ 4(c)(iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
First, Respondent’s <univisionmobile.com> domain name capitalizes on Complainant’s well-known UNIVISION mark for commercial profit and thereby demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iv). Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Additionally, the Panel finds that Respondent’s bad faith is demonstrated even though Respondent may not have generated the content appearing on the at-issue parking page, and even though Respondent may not be receiving any fees produced by the parking page. See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith); see also, Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked’ . . . for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees . . .”).
Finally, Respondent had knowledge of Complainant’s rights in the UNIVISION mark prior to registering the at-issue domain name. Complainant’s trademark registrations for the UNIVISION mark and related marks are extensive. The UNIVISION mark is unique and it is thus unlikely that anyone would register the mark as part of a domain name independent of having a prior awareness of such mark. Moreover, combining Complainant’s mark with the suggestive term “mobile” further indicates that Respondent must have known of Complainant’s trademark(s) at the time it registered the at-issue domain name. Respondent’s prior knowledge of Complainant's trademark shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See 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 <univisionmobile.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 28, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page