DECISION
Univision Communications Inc. v. Leurys castillo / hostingrd.com
Claim Number: FA1503001609087
PARTIES
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is Leurys castillo / hostingrd.com (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <univisions.net>, 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.
Bruce E. O’Connor as Panelist.
PROCEDURAL HISTORY
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the Forum electronically on March 11, 2015; the Forum received payment on March 11, 2015.
On March 13, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <univisions.net> 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 the Policy.
On March 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@univisions.net. Also on March 13, 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.
A timely Response was received on March 13, 2015.
On March 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. O’Connor as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of 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.
RELIEF SOUGHT
Complainant requests that the domain name <univisions.net> (the “Domain Name”) be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Background
This Complaint is based on Complainant's well-known and federally registered UNIVISION marks (the “Trademark”).
Complainant is the premier Spanish-language media company in the U.S. 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. The flagship of Complainant's television operations is the Univision Network, which is the most-watched Spanish-language broadcast television network in the U.S., reaching 95% of U.S. Hispanic households. Many of Univision Network television programs are among the most popular and most watched programs in the United States, not only among the 50 million strong Latino/Hispanic audiences but also across language and cultural divides. Indeed, in several designated market areas Univision Network programs rank No.1 in prime time, across all audiences. The Trademark has become a household name and symbol for virtually all Latinos/Hispanics living in the United States, and is as famous and well-known to the Spanish-speaking population in the United States as NBC, ABC, CBS and FOX are to English-speaking audiences.
Complainant also owns and operates Univision Radio, Inc. and Univision Interactive Media, Inc. Univision Radio is the largest Spanish-language radio broadcaster in the U.S., and owns and/or operates 68 radio stations in 16 of the top 25 U.S. Hispanic markets and 5 stations in Puerto Rico. Univision Interactive Media is Complainant's digital division and its operations include www.univision.com, the most-visited Spanish-language website in the United States, and Univision Móvil, the industry's most comprehensive Spanish language suite of mobile offerings. It was estimated that during the first quarter of 2014, Complainant’s online and mobile offerings generated approximately 1.4 billion page views.
For 2013, Complainant's total net revenue from its television, radio, Internet and mobile operations combined is approximately US $2.63 billion. Complainant and its affiliates have expended tens of millions of dollars in promoting the Trademark and have acquired substantial goodwill in the mark.
Complainant and its affiliates have been using the Trademark in commerce in the United States in connection with:
television broadcasting services (since at least as early as 1987);
online media, news and entertainment services (since at least as early as 2000);
radio broadcasting services (since at least as early as 2003);
motion picture distribution (since at least as early as 2003);
mobile distribution of news, media and entertainment content (since at least as early as 2004);
offering of prepaid cards (since at least as early as 2010); and
offering of savings and discounts on prescription and over-the-counter pharmaceuticals, vitamins, and medical products (since at least as early as 2011).
Complainant and its affiliates own a number of United States federal service mark and trademark registrations for the Trademark, including:
Reg. No. 1624073 (UNIVISION)
Reg. No. 1672807 (UNIVISION & Design)
Reg. No. 2518239 (UNIVISION)
Reg. No. 2518240 (UNIVISION)
Reg. No. 2528166 (UNIVISION.COM)
Reg. No. 2518241 (UNIVISION.COM)
Reg. No. 3568848 (UNIVISION RADIO & Design)
Reg. No. 3483636 (UNIVISION MOVIL)
Reg. No. 3990926 (UNIVISION INTERACTIVE MEDIA)
Reg. No. 4012164 (UNIVISION)
Reg. No. 4012168 (UNIVISION & Design)
Reg. No. 4174474 (UNIVISION STUDIOS)
Reg. No. 4174976 (CLUB UNIVISION)
Reg. No. 4258955 (UNIVISIONFARMACIA)
The Domain Name was registered on May 7, 2012, long after Complainant's rights in the Trademark had been established and had been famous and widely known in the United States and internationally.
Confusing Similarity
The Domain Name is confusingly similar to the Trademark because it contains Complainant's mark in its entirety, with only the addition of the letter "s." The addition of the generic top-level domain ".net" also does not distinguish the Domain Name from the Trademark.
Lack of Rights and Legitimate Interest
Nothing in the WHOIS record for the Domain Name suggests that Respondent is commonly known by the name "Univision."
Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the Domain Name. Respondent is using that domain name for a Spanish-language website that shows videos posted on YouTube.com, including video clips from Complainant's news programs such as Primer Impacto. On its website, Respondent is not only using a name that is confusingly similar to the Trademark, but is also using a logo that duplicates Complaint's famous tulip-shaped "U" logo, thereby creating the appearance that Respondent's website is associated or affiliated with Complainant (i.e., passing-off).
Furthermore, Respondent is displaying the following copyright notice at the bottom of each page of its website:
Univisions Noticias Copyright (C) 2015.
The name "Univisions Noticias" is virtually identical to the name of Complainant's popular news program and channel Noticias Univision (http://noticias.univision.com).
Complainant has never authorized Respondent to use the Trademark or Complainant's tulip-shaped "U" logo, or any confusingly similar variation thereof, on or in connection with any website. Nor is there any affiliation, connection or association between Respondent and Complainant. It is clear that Respondent is attempting to pass off its website as being connected to or associated with Complainant.
Bad Faith Registration and Use
Respondent is using the Domain Name for a website that is attempting to pass off as being associated or affiliated with Complainant.
Given the notoriety of the Trademark coupled with the fact that the Trademark has been registered on the Principal Register of the United States Patent and Trademark Office, Respondent had either actual or constructive knowledge of the Trademark at the time of registration of the Domain Name.
Given the notoriety of the Trademark, it is inconceivable that registration and use by anyone of Complainant's mark as the URL of a website is not an attempt in bad faith to take advantage of the tremendous goodwill and fame of Complainant's mark.
B. Respondent
Respondent states that it has resolved the problem and removed the logos.
Informal Response
The Response consists of a single sentence statement. Paragraph 5 of the Rules requires any response to address specifically the statements and allegations in the complaint, to provide specific contact and communications information for the respondent, to state that a copy of the response has been sent to the complainant, and to include a certification as to the information, purpose and assertions of the response. The Response is deficient in all of these respects. Because of the informality of the Response, the Panel is empowered by paragraph (10)(c) of the Rules to find the Response inadmissible and to decide the dispute solely on the basis of the Complaint in accordance with paragraph 5(e) of the Rules.
Policy
Complainant has established trademark rights in the Trademark. The Domain Name is confusingly similar to the Trademark. Respondent has no legitimate rights to or interest in the Domain Name. Respondent's adoption and use of the Domain Name has been 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.
The numerous U.S. Trademark Registrations identified by Complainant establishes its rights in the Trademark. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
The Domain Name is confusingly similar to the Trademark, because Respondent has simply attached the letter “s” to the mark, and added the gTLD “.net.” See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy paragraph 4(a)(i)); see also 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 paragraph 4(a)(i) analysis).
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 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 Policy paragraph 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.”).
Regarding paragraph 4(c)(ii), Complainant establishes that Respondent is not commonly known by the Domain Name. Regarding paragraph 4(c)(iii), Complainant establishes that Respondent's use is commercial.
Regarding paragraph 4(c)(i), notice of this dispute occurred on service of the Complaint on July 31, 2014. Complainant establishes that prior to that date, Respondent was using the Domain Name at a Spanish language website that shows videos. This business is identical to and competitive with the business of Complainant conducted under the Trademark. As such, such use infringes the rights of Complainant in the Trademark and is not bona fide.
Complainant thus has made a prima facie case that Respondent does not have rights or legitimate interests in the Domain Name. But Complainant’s showing goes further. Respondent’s website prominently displays a logo that closely emulates the logo of Complainant, and a trademark UNIVISIONS in proximity to Respondent’s logo that is almost identical to the Trademark. Respondent also uses a copyright notice that mimics a copyright notice used by Complainant. The Panel finds that Respondent’s use of the Domain Name is an act of passing off. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.
Paragraph 4(b) of the Policy reads:
[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In each of the circumstances listed in Policy paragraph 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the Domain Name in bad faith as provided under the Policy. And, the Respondent must have known or should have known of the Trademark.
Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). A sufficient showing under Policy paragraph 4(a)(iii) requires more and must convince the Panel that the Respondent is in fact a cybersquatter.
Respondent’s passing off previously discussed implies actual knowledge of Trademark and intent to divert customers to Respondent’s website. The Panel finds that such activity constitutes bad faith use under paragraph 4(b)(iv) of the Policy. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant argues that due to the fame of its Trademark, numerous trademark registrations, and due to the fact that Respondent has prominently displayed a logo similar to Complainant’s logos throughout its website, it is inconceivable that Respondent registered the Domain Name without constructive and/or actual knowledge of Complainant’s rights in the UNIVISION mark.
The common view in UDRP proceedings is to find bad faith only through actual knowledge. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); Jim Blackmon v. Mary Alvarez / Innovative Productions, FA 1526715 (Nat. Arb. Forum Dec. 6, 2013) (“[B]ad faith registration or use cannot be based on constructive notice…”).
The Panel finds that Respondent had actual knowledge of the Trademark, prior to registration of the Domain Name, from the notoriety of the Trademark and from Respondent’s subsequent passing off. Such actual knowledge leads the Panel to find that Respondent registered the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy. 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.”); O2 Holdings Ltd. v. Sarang Hodjati, D2010-1887 (WIPO January 29, 2011)( “If the respondent’s use of the domain name is caught by paragraph 4(b)(iv) of the Policy, as the Panel has found to be the case, that bad faith use may provide sufficient evidence, in the absence of any evidence to the contrary, that the Domain Name was also registered in bad faith…”).
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <univisions.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. O’Connor, Panelist
Dated: March 30, 2015
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