Univision Communications Inc. v. subject to UDRP subject to UDRP
Claim Number: FA1412001596603
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is subject to UDRP subject to UDRP (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <univisioncreditcard.com>, registered with Tucows Domains Inc.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2014; the National Arbitration Forum received payment on December 22, 2014.
On December 23, 2014, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <univisioncreditcard.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2015 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@univisioncreditcard.com. Also on January 16, 2015, 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 February 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq., 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
i) Complainant has registered UNIVISION with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,624,073, registered Nov. 20, 1990). Complainant uses the mark for television broadcasting services and related services. The <univisioncreditcard.com> domain name is confusingly similar to the UNIVISION mark as it combines the mark with the generic phrase “credit card.” The included phrase exploits the fact that Complainant has used the UNIVISION mark in connection with prepaid cards in the United States since at least 2010. See Compl., at Attached Ex. 4. The addition of the generic top-level domain is insignificant to the confusingly similarity analysis.
ii) Respondent is without rights or legitimate interests in the disputed domain name. Nothing in the WHOIS record suggests Respondent is commonly known by the disputed domain name. Further, Respondent is using the disputed domain name to promote a web directory with links to third-party websites unrelated to Complainant. See Compl., at Attached Ex. 6.
iii) Respondent has registered and used the disputed domain name in bad faith. Respondent is using the confusingly similar domain name to redirect users to Respondent’s own website where Respondent presumably generates click-through or referral fees. Such conduct constitutes bad faith pursuant to Policy ¶ 4(b)(iv). Further, Respondent knew of the UNIVISION mark when it registered the disputed domain name, as demonstrated by the fame of the mark, and the use of the mark with a related phrase in forming the <univisioncreditcard.com> domain name.
B. Respondent
Respondent did not submit a response. The disputed domain name was registered December 9, 2011.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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 urges that it has registered UNIVISION with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,624,073, registered Nov. 20, 1990). Complainant uses the mark for television broadcasting services and related services. The Panel concludes that Complainant’s USPTO registration of UNIVISION sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i), despite Respondent’s purported residence in the Cayman Islands. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Complainant argues that the <univisioncreditcard.com> domain name is confusingly similar to the UNIVISION mark as it combines the mark with the generic phrase “credit card.” Complainant claims the included phrase exploits the fact that Complainant has used the UNIVISION mark in connection with prepaid cards in the United States since at least 2010. See Compl., at Attached Ex. 4. Complainant further adds that the addition of the generic top-level domain is insignificant to the confusingly similarity analysis. Prior panels have found confusing similarity where the domain name is comprised of the mark in full, alongside generic or descriptive terms and a gTLD. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds Policy ¶ 4(a)(i) satisfied as the <univisioncreditcard.com> domain name is confusingly similar to the UNIVISION mark.
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 argues that Respondent is without rights or legitimate interests in the disputed domain name. Complainant alleges that nothing in the WHOIS record suggests Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies “subject to UDRP subject to UDRP” as registrant. As Respondent has failed to add any evidence to the record, the Panel determines there is no basis to find Respondent commonly known by the disputed domain name as imagined by Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is merely using the disputed domain name to promote a web directory with links to third-party websites unrelated to Complainant. Complainant presumes Respondent generates referral fees from the promoted links. The Panel sees that the disputed domain name resolves to feature the likes of “Prepaid Credit Card,” “Phone Credit Card Swipe,” and “Credit Card Processing.” See Compl., at Attached Ex. 6. The Panel finds that Respondent’s use of the <univisioncreditcard.com> domain name in connection with pay-per-click links unrelated to Complainant amounts to 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant explains that Respondent is using the confusingly similar domain name to redirect users to Respondent’s own website where Respondent presumably generates click-through or referral fees. It is Complainant’s position that such conduct constitutes bad faith pursuant to Policy ¶ 4(b)(iv). The Panel recalls that the disputed domain name resolves to feature links such as, “Prepaid Credit Card,” “Phone Credit Card Swipe,” and “Credit Card Processing.” See Compl., at Attached Ex. 6. Consistent with prior UDRP decisions, the Panel agrees that Respondent’s use of the <univisioncreditcard.com> domain name in connection with a pay-per-click website featuring links unrelated to Complainant evinces bad faith under Policy ¶ 4(b)(iv). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).
Further, Complainant claims that Respondent knew of the UNIVISION mark when it registered the disputed domain name, as demonstrated by the fame of the mark, and the use of the mark with a related phrase in forming the <univisioncreditcard.com> domain name. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. For example, panels have inferred actual knowledge where the disputed domain name is comprised and used in such a way that demonstrates the respondent’s familiarity with the complainant. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). At present, the Panel agrees that the circumstances show Respondent registered the disputed domain name with actual knowledge of Complainant and its use of the UNIVISION mark for prepaid card services, and therefore evidence of Policy ¶ 4(a)(iii) bad faith registration.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <univisioncreditcard.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 20, 2015
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