Univision Communications Inc. v. Jarabacoa City
Claim Number: FA0608000787169
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega, of McDermott Will & Emery LLP, 2049 Century Park East, 34th Floor, Los Angeles, CA 90067. Respondent is Jarabacoa City (“Respondent”), 3518-97 St, Corona, Queens, NY 11368.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lakalle1059.com>, registered with Go Daddy Software, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 5, 2006.
On August 31, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <lakalle1059.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 27, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@lakalle1059.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 4, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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." 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 makes the following assertions:
Complainant is a wholly owned subsidiary of Univision Radio,
Inc., which owns radio stations in seventeen of the largest twenty-five
Hispanic markets in the United States.
One of these stations is “La Kalle 105.9 / 92.7 FM,” which
broadcasts Spanish language dance music in the New York City area.
Complainant has used the LA KALLE mark in commerce since it
launched the corresponding radio station on May 27, 2005.
As a result of its continuous use in commerce since that
time, the mark has acquired significant goodwill and fame for Complainant’s
broadcast business done under the mark.
Additionally, Complainant holds a trademark registration
with the United States Patent and Trademark Office (“USPTO”) for the LA KALLE
mark (Reg. No. 3,097,264, issued May 30, 2006, filed June 20, 2005).
Respondent registered the <lakalle1059.com> domain name on May 27, 2005.
Respondent’s disputed domain name resolves to a website that streams third-party sound recordings, and is therefore directly competing with Complainant’s business..
Respondent is not authorized to use Complainant’s LA KALLE mark, and Respondent is not associated with Complainant in any way.
Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <lakalle1059.com> domain name.
Respondent’s <lakalle1059.com> domain name is confusingly similar to Complainant’s LA KALLE mark.
Respondent does not have any rights or legitimate interests in the <lakalle1059.com> domain name.
Respondent registered and uses the <lakalle1059.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a 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 same domain name was registered and is being used by Respondent 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."
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.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of its LA KALLE mark with the
USPTO establishes Complainant’s rights in the mark, notwithstanding that
Respondent registered the domain name prior to the issuance of Complainant’s
trademark registration. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002): "Panel decisions have held that
registration of a mark is prima facie evidence
of validity,…."); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003): “[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”
In addition, Complainant has submitted evidence of its
acquisition of secondary meaning in the LA KALLE mark through its use in
connection with broadcasting services in the New York City area. Such use establishes that Complainant holds
common law rights in the mark for purposes of Policy ¶ 4(a)(i). See
SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a
complainant's mark be registered by a government authority or agency for rights
to exist); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA
142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that a complainant established
rights in the descriptive mark RESTORATION GLASS through proof of secondary
meaning associated with the mark).
Respondent’s <lakalle1059.com> domain name is confusingly similar to Complainant’s LA KALLE mark as it contains Complainant’s mark in its entirety with the mere addition of the numbers “1059,” which correspond to Complainant’s radio frequency operated under mark. Such an addition, which has an obvious relationship to the mark, does not negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business).
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests in the <lakalle1059.com> domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, so that Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion, because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use Complainant’s LA KALLE mark, that Respondent is not associated with Complainant in any way, and that Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <lakalle1059.com> domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
Moreover, the evidence of record indicates that Respondent
uses the disputed domain name to operate a website which streams music, and is
therefore directly competing with Complainant’s business. Such use of Complainant’s mark is 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 Ameritrade
Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that a respondent’s use of a disputed domain name to redirect
Internet users to a financial services website, which competed with the
business of complainant, was not a bona fide offering of goods or
services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a
respondent was not using domain names for a bona fide offering of goods
or services nor a legitimate noncommercial or fair use where that respondent
used the names to divert Internet users to a website that offered services
competing with those offered by a complainant under its marks).
The Panel thus finds that Policy ¶
4(a)(ii) has been satisfied.
Although Complainant’s trademark registration application alleges a first use of May 29, 2005, Complainant has submitted evidence showing that its first use of the mark was actually on May 27, 2005. Respondent’s domain name registration on May 27, 2005, is therefore no mere coincidence, but evidence of opportunistic bad faith under Policy ¶ 4(a)(iii). Respondent’s registration of Complainant’s broadcasting mark combined with the numbers of the corresponding radio frequency on the day the station debuted is strong evidence of bad faith registration and use by Respondent. See, for example, Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that a respondent’s registration of the <seveballesterostrophy.com> domain name coincident with the announcement of a Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
We also observe that
Respondent apparently uses the disputed domain name for its commercial benefit
by taking advantage of the goodwill associated with Complainant’s name and mark
to market its own competing service, and that Respondent’s domain name creates
a likelihood of confusion as to the source and affiliation of Complainant with the
disputed domain name. In H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8,
2003), the panel found that a disputed domain name was registered and used in
bad faith pursuant to Policy ¶ 4(b)(iv) by virtue of a respondent’s registration
and use of a challenged domain name intentionally to attempt to attract
Internet users to its website by using a complainant’s famous marks and
likeness. See also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003):
Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.
For these reasons, we conclude that Policy ¶ 4(a)(iii) has
been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <lakalle1059.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 18, 2006
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