Univision Communications Inc. v. T Murray / HDTV LLC
Claim Number: FA1402001543193
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is T Murray / HDTV LLC (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <univisionline.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on February 11, 2014; the National Arbitration Forum received payment on February 11, 2014.
On February 11, 2014, GODADDY.COM, LLC confirmed by e-mail to the Nation-al Arbitration Forum that the <univisionline.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the registration agreement of GODADDY.COM, LLC 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 12, 2014, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of March 4, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@univisionline.com. Also on February 12, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 10, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 is the premier Spanish-language media company in the United States, and its portfolio includes television, radio, Internet and mobile offerings.
Complainant’s digital division, Univision Interactive Media, includes the website
www.univision.com, which is the most-visited Spanish-language website in the United States.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”), for the UNIVISION trademark (Registry No. 1,624,073, registered November 20, 1990).
Respondent registered the <univisionline.com> domain name on or about August 18, 2013.
The domain name is confusingly similar to Complainant’s UNIVISION mark.
Respondent has not been commonly known by either the name UNIVISION.
There is no affiliation or association between Respondent and Complainant.
Complainant has never authorized Respondent to register or use Complainant’s UNIVISION mark as part of any domain name.
Respondent hosts a webpage at <univisionline.com> to promote “UNIVISION for the Web” and claiming to “change the way people watch TV on the Web.”
The same webpage that makes reference to Complainant and shows a video clip from Complainant’s television programming.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent knew of Complainant and its UNIVISION mark at the time of regis-tration of the <univisionline.com> domain name.
Respondent has registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able 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 service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark author-ity, the United States Patent and Trademark Office (“USPTO”). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that a UDRP complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <univisionline.com> domain name is con-fusingly similar to Complainant’s UNIVISION service mark. The domain name contains Complainant’s mark in its entirety, with only the addition of the generic top Level Domain (“gTLD”) “.com” and the term “line,” a contracted form of “on-line,” which describes an aspect of Complainant’s business. These alterations of Complainant’s mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the domain name <westfieldshopping.com> confusingly similar to the WESTFIELD mark because the mark was the dominant element of the domain name).
See also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (finding that the addition of the generic top-level domain (“gTLD”) “.com” to the mark of another in creating a domain name was irrelevant to a Policy 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the name UNIVISION, that there is no affiliation or association between Respondent and Complainant, and that Complainant has never authorized Respondent to register or use that name and mark as part of any domain name. Moreover, the WHOIS record identifies the registrant of the <univisionline.com> domain name only as “T Murray / HDTV LLC,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the contempla-tion of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel there concluding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name where there was no evidence in the record, including the rele-vant WHOIS information, suggesting that that respondent was commonly known by that domain name.
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses <univisionline.com> domain name to host a webpage pro-moted as “UNIVISION for the Web” and claiming to “change the way people watch TV on the Web,” and which displays a YouTube video clip from one of Complainant’s television programs. In the circumstances here presented, we are comfortable in presuming that Respondent seeks to profit the operation of resolv-ing webpage. This employment of the domain name is neither a bona fide offer-ing of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that a respondent’s parking of a domain name containing a UDRP complainant’s mark for that respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the contested <univisionline.com> domain name, which is confusingly similar to Complainant’s UNIVISION service mark, to seek to profit from confusion cause among Internet users as to the possibility of Complainant’s association with the domain name and resolving webpage demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding, under Policy ¶ 4(b)(iv), that a UDRP respondent's use of a domain name derived from the mark of another to profit from confusion thus caused among Internet users showed bad faith in the registration and use of that domain name.
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the UNIVISION service mark at the time of registration of the <univisionline.com> domain name. This stands as independent proof of Re-spondent’s bad faith in the registration of the domain name. See, for example, Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a UDRP complainant's YAHOO! mark at the time of domain name registration).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <univisionline.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 21, 2014
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