Univision Communications Inc. v. miguel valentin / WOWZA ADSENE NETWORK
Claim Number: FA1512001654737
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is miguel valentin / WOWZA ADSENE NETWORK (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unimasvideo.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 30, 2015; the Forum received payment on December 30, 2015.
On December 30, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <unimasvideo.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 GoDaddy.com, LLC 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 December 31, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 20, 2016 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@unimasvideo.com. Also on December 31, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 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 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
Pursuant to ICANN Rule 3(b)(viii), set forth below is the Trademark/Service Mark Information:
This Complaint is based on Complainant’s federally registered UNIMAS trademarks. 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. Complainant and its affiliates have been delivering news and entertainment to Spanish-speaking audiences since the late 1970s. Many of Complainant’s and its affiliates’ television programs are among the most popular and most watched programs in the United States, not only among the 50 million strong Latino/Hispanic audience but also across language and cultural divides. One of the television networks owned and operated by Complainant and its affiliates is called “UniMas” – formerly known as “Telefutura.” Launched in 2002, Telefutura provided diverse programming including telenovelas, feature films, sports, etc. and was highly popular among Hispanics between the ages of 18 and 35. In December 2012 Complainant rebranded the Telefutura network as the UniMas network, with the goal of deliver alternative, edgier content targeting more the younger generation of Latinos. As of this writing, UniMas is the second highest rated Spanish-language television network in the United States, behind it sister network, Univision.
Complainant and its affiliates have been using the UNIMAS mark in commerce in the United States since at least as early as January 7, 2013, and such use is continuous and nationwide:
Complainant is the owner of the following United States service mark registrations for the UNIMAS mark, which cover “entertainment services, namely, production and distribution of television programs distributed across multiple forms of transmission media, featuring action, adventure, drama, comedy, romance, news, science fiction, music, and mysteries; and computer services, namely, providing entertainment information relating to motion pictures, television programs, news, celebrities, and music, offered over global computer information networks”:
[i.] Reg. No. 4,467,679, issued on January 14, 2014
[ii.] Reg. No. 4,419,757, issued on October 15, 2013
In addition, Complainant and its affiliates have registered the UNIMAS mark in numerous other countries around the world.
COMPLAINANT FACTUAL AND LEGAL GROUNDS
[a.] Identical and/or Confusingly Similar
[i.] Complainant and its affiliates have established rights in the UNIMAS mark through continuous and widespread use in commerce in the United States and other countries, as well as through registration of the UNIMAS mark with the trademark authorities in the United States and other countries. The <UNIMASVIDEO.COM> domain name was registered on March 20, 2014, more than a year after Complainant and its affiliates had established trademark rights in the UNIMAS mark in the United States. In fact, at the time Respondent registered the disputed domain name, Complainant’s adoption of the UNIMAS mark had already been widely publicized in the United States.
[ii.] Respondent’s <UNIMASVIDEO.COM> domain name is confusingly similar to Complainant’s UNIMAS mark because it combines Complainant’s mark in its entirety with the generic term “video.” It is well established by prior panel decisions that the addition of a generic term, such as “video”, is insufficient to distinguish a domain name from a trademark. See e.g. Univision Communications Inc. v. Domains By Proxy - NA Proxy Account / Niche Domain Proxy Manager, FA1201001422592 (Nat. Arb. Forum Feb. 7, 2012) (finding that <univisionvideos.com> is confusingly similar to Complainant’s UNIVISION mark); America Online, Inc. v. Anil Thricovil, FA0602000638077 (Nat. Arb. Forum March 22, 2006) (finding that <aolvideo.com> is confusingly similar to Complainant’s AOL mark); Warner Bros. Entertainment Inc. v. Markov Sergei Nikolaevich, FA0809001225813 (Nat. Arb. Forum Nov. 5, 2008) (finding the domain <tmz-video.com> to be confusingly similar to Complainant’s TMZ mark).
[iii.] Moreover, the addition of the generic top-level domain “.com” also does not distinguish Respondent’s domain name from Complainant’s mark. See e.g. Travelocity.com LP v. Thomas Lefleur c/o n/a, FA 1296087 (Nat. Arb. Forum Jan. 11, 2010) (“Similarly, the addition of a gTLD does not reduce the likelihood of confusion between the resulting domain name and the mark, because every domain name must contain a top-level domain.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
[b.] Rights or Legitimate Interests
Respondent does not have any rights or legitimate interests in the disputed domain name:
[i.] Nothing in the WHOIS record suggests that Respondent is commonly known by the name “UniMas”. It is well established by prior panel decisions that a respondent does not have rights in a disputed domain name when the respondent is not commonly known by that name. See e.g. Univision Communications Inc. v. mga enterprises limited, FA1007001336097 (Nat. Arb. Forum Sept. 6, 2010) (finding that Respondent had no legitimate right or interest in the <univisionautos.com> domain name); Univision Communications Inc. v. Cayman Ninety Business, Domain Administrator, FA1007001337367 (Nat. Arb. Forum Aug. 30, 2010) (finding that Respondent had no legitimate right or interest in the <univisionnoticias.com> domain name); Univision Communications Inc. v. Fabian Ciodo, FA1007001337365 (Nat. Arb. Forum Aug. 26, 2010) (finding that Respondent had no legitimate right or interest in the <univisionhoroscopos.com> domain name); Univision Communications Inc. v. Above.com Domain Privacy, FA1109001406720 (Nat. Arb. Forum Aug. 26, 2010) (finding that Respondent had no legitimate right or interest in the <univisionnews.com> domain name).
[ii.] Respondent does not appear to be making any bona fide use of the <UNIMASVIDEO.COM> domain name. The <UNIMASVIDEO.COM> domain name resolves to a website that purports to offer users the ability to watch video streams of movies and television programs. As such, Respondent appears to be offering a service that competes directly with Complainant’s services associated with the UNIMAS mark. Also, on its website Respondent is using the term “UniMas Video” in a stylized logo design form that closely resembles Complainant’s UNIMAS logo (U.S. Reg. No. 4,467,679). By using the disputed domain name in this manner, Respondent is diverting Internet users seeking Complainant’s UNIMAS website to Respondent’s own website. Respondent then profits from consumers who are mistakenly diverted to Respondent’s website under the false belief that they have reached a site operated or endorsed by Complainant. It is well established by prior panel decisions that a respondent’s use of a disputed domain name in this manner is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name under ICANN Policy. See e.g., Google Inc. v. ROB LIE / ROB SMITH, FA1507001631045 (Nat. Arb. Forum Sept. 2, 2015); Univision Communications Inc. v. Domains By Proxy - NA Proxy Account / Niche Domain Proxy Manager, FA1201001422592 (Nat. Arb. Forum Feb. 7, 2012).
[iii.] Complainant has never authorized Respondent to register or use Complainant’s UNIMAS mark as part of any domain name. Nor is there any affiliation, connection or association between Respondent and Complainant.
[iv.] As stated above, Respondent’s <UNIMASVIDEO.COM> domain name was registered long after Complainant and its affiliates had already established rights and substantial goodwill in the UNIMAS mark.
[c.] Registration and Use in Bad Faith
Respondent has registered and is using the <UNIMASVIDEO.COM> domain name in bad faith:
[i.] Respondent is using the <UNIMASVIDEO.COM> domain name, which is confusingly similar to Complainant’s UNIMAS mark, to redirect Internet users to Respondent’s own website that offers a service that competes directly with Complainant’s service. Thus, Respondent is capitalizing on and profiting from Complainant’s mark and the goodwill associated with Complainant’s mark. It is well established by prior panel decisions that use of a disputed domain name for this purpose constitutes bad faith registration and use under ICANN Policy 4(b)(iv). See e.g. Univision Communications Inc. v. mga enterprises limited, FA1007001336097 (Nat. Arb. Forum Sept. 6, 2010); Univision Communications Inc. v. Cayman Ninety Business, Domain Administrator, FA1007001337367 (Nat. Arb. Forum Aug. 30, 2010); Univision Communications Inc. v. Fabian Ciodo, FA1007001337365 (Nat. Arb. Forum Aug. 26, 2010); Univision Communications Inc. v. Above.com Domain Privacy, FA1109001406720 (Nat. Arb. Forum Aug. 26, 2010).
[ii.] Given that Complainant’s adoption of the UNIMAS mark in December 2012 was widely publicized, coupled with the fact that Complainant’s UNIMAS mark has been registered on the Principal Register of the United States Patent and Trademark Office since October 15, 2013, Respondent had either actual or constructive knowledge of Complainant’s mark at the time of registration of the <UNIMASVIDEO.COM> domain name. It is well established by prior panel decisions that a respondent’s registration of a domain name that is confusingly similar to the complainant’s trademark with actual or constructive knowledge of the complainant’s rights in the mark is evidence that the respondent has registered and used the domain name in bad faith. See e.g. Univision Communications Inc. v. mga enterprises limited, FA1007001336097 (Nat. Arb. Forum Sept. 6, 2010); Univision Communications Inc. v. Cayman Ninety Business, Domain Administrator, FA1007001337367 (Nat. Arb. Forum Aug. 30, 2010); Univision Communications Inc. v. Fabian Ciodo, FA1007001337365 (Nat. Arb. Forum Aug. 26, 2010); Univision Communications Inc. v.
Above.com Domain Privacy, FA1109001406720 (Nat. Arb. Forum Aug. 26, 2010).
[iii.] Through its counsel, Complainant sent a cease and desist letter to Respondent on September 29, 2015. On October 17, 2015, Respondent replied in Spanish via email to Complainant’s counsel, which reply translates into English as follows: “If you are so interested in it the DOMAIN NAME IS FOR SALE.” On October 27, 2015, Complainant’s counsel replied to Respondent that Complainant was willing to pay Respondent what he paid to register the disputed domain name, up to $100. On November 17, 2015, Respondent sent a second email reply in Spanish to Complainant’s counsel which reply translates into English as follows: “I’ll see you in court. My price for the domain is $100,000 and please don’t threaten me, because I know my rights and you cannot obligate me to give you the domain.” Respondent offered to sell the disputed domain name to Complainant for $100,000, an amount well in excess of Respondent’s actual out-of-pocket costs to register the domain. It is well established by prior panel decisions that an offer to sell a disputed domain for an amount in excess of actual out-of-pocket costs constitutes prima facie evidence that a respondent has acted in bad faith under Policy ¶4(b)(i). See, e.g., Fosbrooke, Inc. v. Biotech Scams, FA 1640351 (Nat. Arb. Forum Oct. 23, 2015) (“Prior Panels have found that a respondent’s offering of disputed domain names for an amount in excess of out-of-pocket costs can demonstrate bad faith under Policy ¶4(b)(i)”); George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of- pocket costs it incurred in initially registering the disputed domain name).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 uses the UNIMAS mark in connection with its business in the field of entertainment services, namely, production and distribution of television programs distributed across multiple forms of transmission media. Complainant has rights in the UNIMAS mark pursuant to its various registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,419,757, registered October 15, 2013). A complainant’s registration with the USPTO (or any similar governmental authority) is sufficient in establishing rights in a mark under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). Complainant’s USPTO trademark registration of the UNIMAS mark is sufficient to demonstrate its Policy ¶4(a)(i) rights.
Complainant claims Respondent’s <unimasvideo.com> domain name is confusingly similar to the UNIMAS mark because it incorporates the mark in its entirety, adds the generic term “video” and appends the gTLD “.com.” A TLD (whether a gTLD or ccTLD) must be disregarded when determining confusing similarity to a mark under Policy ¶4(a)(i) because all domain names must contain a TLD. Such changes in a domain name are not sufficient to distinguish it from the mark. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Adding a generic descriptive term to a domain name also does not adequately distinguish it from a mark under Policy ¶4(a)(i), see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Respondent’s <unimasvideo.com> domain name is confusingly similar to the UNIMAS mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the <unimasvideo.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant given Respondent license to use the UNIMAS mark. The WHOIS information regarding the disputed domain name lists “miguel valentin / WOWZA ADSENE NETWORK” as the registrant of record. Respondent has failed to submit a response in this proceeding to explain how Respondent is commonly known by the disputed domain name. There is no obvious similarity between the domain name and Respondent’s name. There is simply no evidentiary basis to find Respondent is commonly known by the disputed domain name under Policy ¶4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant claims Respondent is making neither (i) a bona fide offering of goods or services, nor (ii) a legitimate noncommercial or fair use through the <unimasvideo.com> domain name. The domain name resolves to a website which offers streaming video of movies and television programs. Respondent is offering a service that directly competes with Complainant’s business associated with their use of the UNIMAS mark. By using the disputed domain name in this manner, Respondent is diverting Internet users seeking Complainant’s UNIMAS website to Respondent’s website, disrupting Complainant’s legitimate business purpose. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Respondent’s registration and use of <unimasvideo.com> domain name constitutes neither (i) a bona fide offering of goods or services, nor (ii) a legitimate noncommercial fair use under Policy ¶¶4(c)(i) & (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s offer to sell the disputed domain name for more than its out-of-pocket cost demonstrates bad faith under Policy ¶4(b)(i). Respondent offered to sell the domain name to Complainant for $100,000, which would clearly exceed Respondent’s actual out of pocket costs (the domain name was only registered March 20, 2014). A respondent’s offer to sell a domain name for such a disproportionate amount is evidence of bad faith registration and use. See Kabushiki Kaisha Hitachi Seisakusho (Japan Corp.) v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding the respondent’s offer to sell the domain name for $100,000 constitutes bad faith). Respondent’s offer to sell the disputed domain name to Complainant constitutes bad faith under Policy ¶4(b)(i).
Complainant claims the <unimasvideo.com> domain name was registered in bad faith because Respondent was trying to capitalize on Complainant’s mark. Respondent is using the <unimasvideo.com> domain name to direct Internet users to a webpage showing streaming video movies and television programs. Respondent is obviously capitalizing on (and profiting from) Complainant’s mark and the goodwill associated with Complainant’s mark. Respondent has registered and is using the <unimasvideo.com> domain name in bad faith under Policy ¶4(b)(iv) because Respondent is misleading Internet users from Complainant’s website for Respondent’s own commercial benefit. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Complainant claims Respondent must have had actual notice of Complainant's rights in the UNIMAS mark prior to registration of the domain name because of Complainant's widespread use of the mark, its trademark registrations with the USPTO, and the publicity that surrounded the launch of the UNIMAS mark. In light of this unrebutted evidence, this Panel concludes Respondent had actual notice of Complainant's mark under Policy ¶4(a)(iii) because it was so well known. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); 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 domain name was registered and used in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <unimasvideo.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, January 25, 2016
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