Univision Communications Inc. v. Sergey Asmik
Claim Number: FA1405001558994
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is Sergey Asmik (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <farmaciaunivision.com>, registered with RegisterMatrix.com Corp.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2014; the National Arbitration Forum received payment on May 12, 2014.
On May 19, 2014, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <farmaciaunivision.com> domain name is registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the name. RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com 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 May 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@farmaciaunivision.com. Also on May 21, 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 June 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. Respondent’s <farmaciaunivision.com> domain name is confusingly similar to Complainant’s UNIVISION mark.
2. Respondent does not have any rights or legitimate interests in the <farmaciaunivision.com> domain name.
3. Respondent registered and uses the <farmaciaunivision.com> domain name in bad faith.
B. 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 contends that it is the premiere Spanish-language media company in the United States and 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 demonstrates that it owns trademark registrations with the USPTO for the UNIVISION mark (e.g., Reg. No. 1,624,073, registered November 20, 1990). Although Respondent resides in Russia, Complainant’s USPTO registration of the UNIVISION mark sufficiently shows that it has rights in the mark, as Policy ¶ 4(a)(i) does not require a complainant to register its mark in the jurisdiction in which the respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO is adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has rights in the UNIVISION mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <farmaciaunivision.com> domain name is confusingly similar to Complainant’s UNIVISION mark, as it combines Complainant’s mark in its entirety with the generic term “farmacia,” which means “pharmacy” in English. The inclusion of a generic term does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Finally, Complainant urges that Respondent has added the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The addition of a gTLD to the domain name is inconsequential to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Consequently, the Panel finds that Respondent’s <farmaciaunivision.com> domain name is confusingly similar to Complainant’s UNIVISION mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <farmaciaunivision.com> domain name, and states that it has never authorized Respondent to register or use the UNIVISION mark. Complainant contends that there is no affiliation, connection, or association between Respondent and Complainant. The WHOIS record shows that “Sergey Asmik” is the registrant of the disputed domain name. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel concluded that respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that respondent was commonly known by that domain name, including the WHOIS information as well as complainant’s assertion that it did not authorize or license respondent’s use of its mark in a domain name. Thus, the Panel finds that Respondent is not commonly known by the <farmaciaunivision.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s website at <farmaciaunivision.com> directs Internet users to a web directory hosting links to third-party websites. The Panel notes that Respondent’s website provides links such as “Pharmacy,” “Cheap Drugs,” and “First Aid.” See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel finds that Respondent is not using the <farmaciaunivision.com> domain name in connection with 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <farmaciaunivision.com> domain name to redirect Internet users to a web directory featuring links to third-party websites, presumably earns “click-through” or “referral” fees for redirecting traffic to those third-party sites. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel concluded, “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.’” See also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Accordingly, the Panel finds that Respondent registered and is using the <farmaciaunivision.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent had either actual or constructive knowledge of Complainant’s mark at the time it registered the <farmaciaunivision.com> domain name given the notoriety of Complainant’s UNIVISION mark as well as Complainant’s registration of the UNIVISON marks with national trademark agencies. The Panel agrees and infers that, due to the fame of Complainant's UNIVISION mark, Respondent had actual knowledge of the mark and Complainant's rights in the mark, bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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.”)
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <farmaciaunivision.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 27, 2014
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