DECISION

 

Univision Communications Inc. v. Claire Neveu

Claim Number: FA1708001743026

 

PARTIES

Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA.  Respondent is Claire Neveu (“Respondent”), New Hampshire, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <splinternews.org> and <splinternews.net>, registered with NameCheap, Inc.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 3, 2017; the Forum received payment on August 3, 2017.

 

On Aug 07, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <splinternews.org> and <splinternews.net> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names.  NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 August 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 2017 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@splinternews.org, postmaster@splinternews.net.  Also on August 16, 2017, 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 September 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Univision Communications, Inc., is a media company focused on serving Latino and Hispanic audiences. On July 7, 2017, Complainant made public its adoption of the SPLINTER mark as the new brand name for its news website previously operation under Complainant’s “Fusion” brand. Complainant has rights in the SPLINTER mark based upon its filing with the United States Patent and Trademark Office (“USPTO”) (Ser. No. 87501848, filed June 22, 2017). See Compl., at Attached Annex 1. Respondent’s <splinternews.org> and <splinternews.net> are confusingly similar to Complainant’s SPLINTER mark, as they contain the mark in its entirety, merely adding the descriptive word “news” and the generic top-level domain (“gTLD”) “.com” or “.net.”

2.    Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain, nor has Complainant authorized Respondent to use the SPLINTER mark in a domain name. Respondent is using the disputed domain names to resolve to the websites <gawken.com> and <gawker.com>, which are not owned or operated by Complainant, and presumably earns click-through fees or other commercial benefit for doing so. Such use amounts to neither a bona fide offering of goods or services described in Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

3.    Respondent has registered and used the disputed domain name in bad faith. Respondent is taking advantage of the confusing similarity of the disputed domain names to attract Internet users for commercial gain. Additionally, Respondent’s registration of the disputed domain names on the same day Complainant announced its rebranding of its news website indicates that Respondent had actual or constructive knowledge of Complainant’s rights in the SPLINTER mark.

 

B.   Respondent

1.            Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <splinternews.org> and <splinternews.net> domain names is confusingly similar to Complainant’s SPLINTER mark.

2.    Respondent does not have any rights or legitimate interests in the <splinternews.org> and <splinternews.net> domain names.

3.    Respondent registered or used the <splinternews.org> and <splinternews.net> domain names in bad faith.

 

DISCUSSION

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(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 (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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the SPLINTER mark based upon its filing of an intent-to-use application with the USPTO (Ser. No. 87501848, filed June 22, 2017). See Compl., at Attached Annex 1. In a Policy ¶ 4(a)(i) analysis, rights in a mark can be determined to date back to the filing date of a mark with the USPTO, but only if there is a valid registration of the mark. See ADP, LLC v. Dennis Shifrin / Streamline, FA 1732114 (Forum June 13, 2017) (holding that “the relevant date for Complainant’s mark is the filing date.”); but cf. MaxID Corp. v. Sam Koulusi / Sam, FA 1421132 (Forum Feb. 24, 2012) (holding, “ITU applications confer no rights on the applicant, unless and until the marks

register.”). However, one does not need a valid trademark registration in order to prove rights under Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Therefore, the Panel looks to Complainant’s rights in the HSA BANK mark as they may arise under the common law.

 

Complainant does not explicitly argue it has common law rights in the SPLINTER mark, though it provides evidence that may lead to such an inference. Complainant cites news coverage of the rebranding of its “Fusion” news website to make use of the mark. See Compl., at Attached Annex 2. Media recognition of a Complainant’s use of a mark can be a factor used to consider whether Complainant has rights in the mark. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The Panel notes that the provided evidence indicates Complainant would use the <splinternews.com> domain name to host the rebranded website. The Panel weighs the provided evidence in considering whether Complainant has common law rights in the mark per Policy ¶ 4(a)(i).

 

Complainant claims that Respondent’s <splinternews.org> and <splinternews.net> are confusingly similar to Complainant’s SPLINTER mark, as they contain the mark in its entirety, merely adding the descriptive word “news” and the gTLD “.com” or “.net.” Addition of a descriptive term and a gTLD to a mark in order to form a domain name does not distinguish the domain name from the mark for the purposes of Policy ¶ 4(a)(i). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel therefore agrees the disputed domain names are confusingly similar to the SPLINTER mark per Policy ¶ 4(a)(i).

Rights or Legitimate Interests

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 (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 (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 has no rights or legitimate interests in <splinternews.org> or <splinternews.net> as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the SPLINTER mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record identifies the registrant of the disputed domain names as “WhoisGuard Protected / WhoisGuard, Inc.” before the initiation of the dispute, and now identifies Respondent as “Claire Neveu.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.

 

Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by Respondent’s failure to use the names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Complainant contends that the disputed domain names redirect to a competing or unrelated website, presumably for commercial gain. Use of a disputed domain name to redirect Internet users to a competing or unrelated website is not use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Complainant contends, without evidence, that the disputed domain names resolve to the <gawken.com> and <gawker.com> websites, which are not owned or operated by Complainant, and Respondent presumably earns click-through fees or other commercial benefit for doing so. The Panel agrees and finds Respondent to lack rights and legitimate interests in the disputed domain names per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant contends that Respondent has registered and used the <splinternews.org> and <splinternews.net> domain names in bad faith, as evidenced by Respondent’s use of the disputed domain names to redirect to websites unrelated to Complainant. Use of a disputed domain name for this purpose can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel recalls Complainant’s contention that the disputed domain names redirect to the <gawken.com> and <gawker.com> websites, which are not owned or operated by Complainant, and that Respondent presumably earns click-through fees or other commercial benefit for doing so. The Panel agrees and finds Respondent to have acted in bad faith in registering and using the disputed domain names per Policy ¶ 4(b)(iv).

 

Complainant also contends that Respondent’s registration of the disputed domain names the same day Complainant’s rebranding of their news website was reported in various media outlets. See Compl., at Attached Annex 2 (including multiple articles dated July 7, 2017). The Panel finds that any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

The Panel also finds that Respondent’s registration of the disputed domain names on the day of Complainant’s announcement amounts to opportunistic bad faith. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <splinternews.org> and <splinternews.net> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  September 21, 2017