Gestmusic Endemol, S.A. v.
operaciontriunfo.us and o.operaciontriunfo.us
Claim Number: FA0311000214337
PARTIES
Complainant
is Gestmusic Endemol, S.A.,
Barcelona, Spain (“Complainant”) represented by Ferran Llaquet Ballarin,
Avda. Diagonal, 510, 3°, 08006 Barcelona, Spain. Respondent is o.operaciontriunfo.us and operaciontriunfo.us, Nop (Tampoco),
6969 Spain (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <operaciontriunfo.us>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.Com.
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
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 21, 2003; the Forum received a hard copy of the
Complaint on December 1, 2003.
On
November 24, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed
by e-mail to the Forum that the domain name <operaciontriunfo.us> is registered with Intercosmos Media
Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant
of the name. Intercosmos Media Group,
Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.Com registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the
“Policy”).
On
December 5, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 26, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of
the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the Forum transmitted to the
parties a Notification of Respondent Default.
On
December 31, 2003, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra Franklin 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. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the 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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s <operaciontriunfo.us> domain name is identical to
Complainant’s OPERACION TRIUNFO mark.
2. Respondent does not have any rights or
legitimate interests in the <operaciontriunfo.us>
domain name.
3. Respondent registered or used the <operaciontriunfo.us> domain name
in bad faith.
B.
Respondent has failed to submit a Response in this proceeding.
FINDINGS
Complainant has numerous Community
trademark registrations and applications for its OPERACION TRIUNFO mark, issued
by the Office for the Harmonization in the Internal Market (“OHIM”) (e.g. Reg.
Nos. 2281277, 2553741, 2585115).
Complainant filed its earliest application for its mark with OHIM on
June 28, 2001, and was granted registration on October 16, 2002.
Complainant has also registered and/or
filed applications for OPERACION TRIUNFO with various international registries,
including with the United States Patent and Trademark Office (Ser. No.
78112841).
Complainant uses its OPERACION TRIUNFO
mark in connection with television broadcasting, audiovisual programs
production, and production of various types of music and videos, among other
things. Specifically, Complainant has
used its mark for a television program “Operacion Triunfo,” broadcast on the
public Spanish Television, and which broke all audience ratings known in Spain
during its debut.
Complainant owns registrations for the
domain names <operaciontriunfo.com> and <operaciontriunfo.net> and
operates websites at those locations.
Respondent registered the disputed domain
name on April 29, 2002. Respondent uses
the domain name to provide pornographic content and services, presumably for
profit.
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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.
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established rights in its
OPERACION TRIUNFO mark through registration and continuous use since 2001. See
Gestmusic Endemol, S.A. v. JHOSPIEN, D2002-0845 (WIPO Oct. 24, 2002)
finding that this Complainant satisfied the requirements of UDRP ¶
4(a)(i) where it demonstrated prior use of the OPERACION TRIUNFO mark and had
applied for registration of the mark with OHIM.
The disputed domain name is identical to
Complainant’s registered OPERACION TRIUNFO mark pursuant to Policy ¶ 4(a)(i)
because the name incorporates Complainant’s mark in its entirety. See
Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000)
holding that confusing similarity is decided upon the inclusion of a trademark
in the domain name; see also Magnum
Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29,
2001) holding that confusing similarity is decided upon the inclusion of a
trademark in the domain name.
Additionally, Complainant’s mark is
identical to the disputed domain name because the addition of a top-level
domain is irrelevant for purposes of determining similarity under Policy ¶
4(a)(i). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level
of the domain name such as “.net” or “.com” does not affect the domain name for
the purpose of determining whether it is identical or confusingly similar; see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that the addition of a top-level domain is without legal
significance).
Therefore, Policy ¶ 4(a)(i) is
established.
Respondent has not asserted any rights or
legitimate interests in the domain name.
Therefore, the Panel may presume that Respondent lacks rights and legitimate
interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names; see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
finding no rights or legitimate interests where Respondent fails to respond.
Also, no evidence has been provided to
the Panel that suggests Respondent is the owner or beneficiary of a trade or
service mark that is identical to the domain name pursuant to Policy ¶ 4(c)(i).
Furthermore,
there is no evidence that Respondent is commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(iii).
Though Respondent’s WHOIS information lists Respondent’s name as “o.
operaciontriunfo.us” and organization as “operaciontriunfo.us,” there is no
evidence before the Panel that Respondent was actually commonly known by the
domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat.
Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a
domain name when Respondent is not known by the mark; see also Yoga Works, Inc. v. Arpita d/b/a Shanti Yoga Works,
FA 155461 (Nat. Arb. Forum June 17, 2003) finding that Respondent was not
“commonly known by” the <shantiyogaworks.com> domain name despite listing
its name as “Shanti Yoga Works” in its WHOIS contact information because there
was “no affirmative evidence before the Panel that Respondent was ever
‘commonly known by’ the disputed domain name prior to its registration of the
disputed domain name”.
Moreover,
Respondent is not using the disputed domain name in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(ii), nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iv), because hosting
pornographic material at a designated domain name that infringes upon another’s
mark evidences a lack of rights and legitimate interests in the name. See
Isleworth Land
Co. v. Lost In Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) finding that Respondent’s use of its
domain name to link unsuspecting Internet traffic to an adult-oriented
website, containing images of scantily clad women in provocative poses, did not
constitute a connection with a bona fide offering of goods or services or a
noncommercial or fair use; see also
Paws, Inc. v. Zuccarini a/k/a Country Walk, FA 125368 (Nat. Arb.
Forum Nov. 15, 2002) holding that the use of a domain name that is confusingly
similar to an established mark to divert Internet users to an adult-oriented
website “tarnishes Complainant’s mark and does not evidence noncommercial or
fair use of the domain name by a respondent”; see also ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215
(WIPO May 26, 2003) stating that the fact that the “use of the disputed domain
name in connection with pornographic images and links tarnishes and dilutes
[Complainant’s mark]” was evidence that Respondent had no rights or legitimate
interests in the disputed domain name.
Therefore, Policy ¶ 4(a)(ii) is
established.
Using domain
names that are identical to another’s mark for the purpose of hosting
pornographic material evidences bad faith use.
See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO
June 27, 2000) finding that absent contrary evidence, linking the domain names
in question to graphic, adult-oriented websites is evidence of bad faith; see also Wells Fargo & Co. v. Party
Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to
adult-oriented websites was evidence that the domain names were being used in
bad faith; see also Microsoft
Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) holding that Respondent’s
use of Complainant’s mark to post pornographic photographs and to publicize
hyperlinks to additional pornographic websites evidenced bad faith use and
registration of the domain name.
In addition, the facts steer the Panel to
believe that Respondent used the name in bad faith, pursuant to Policy ¶
4(b)(iv), by intentionally attracting Internet users to its site by means of
creating confusion with Complainant’s mark, in order to generate revenue. The reasons for this finding involve the notorious
character of Complainant’s mark, the nature and ends pursued by the content
provided at Respondent’s site, and the significant likelihood of confusion with
Complainant’s identical mark. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) finding bad faith where the domain name in question is obviously
connected with Complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain; see
also eBay, Inc v.
Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) finding
bad faith where Respondent is taking advantage of the recognition that eBay has
created for its mark and therefore profiting by diverting users seeking the
eBay website to Respondent’s site.
Therefore, Policy ¶ 4(a)(iii) is
established.
DECISION
Having
established all three elements required under the usTLD Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <operaciontriunfo.us>
domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: January 14, 2004
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