Telemundo Network Group LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1904001840240
Complainant is Telemundo Network Group LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <telemundosports.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 23, 2019; the Forum received payment on May 1, 2019.
On May 1, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <telemundosports.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 May 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2019 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@telemundosports.com. Also on May 2, 2019, 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 May 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that is a Spanish language television network owned by Comcast through NBCUniversal. It is the second largest provider of Spanish language content with programming syndicated worldwide to more than 100 countries in over 35 languages. The channel broadcasts programs and original content aimed at Latin American audiences in the United States and worldwide, consisting of telenovelas, sports, reality television, news programming and films. In addition, Complainant operates Telemundo Deportes, the programming division of the NBC Sports Group (note: the Spanish word “Deportes” means “Sports” in English). Established in 1999, Telemundo Deportes is responsible for the production of sports events and magazine programs including soccer/football matches from various international leagues, the Olympic Games, tennis, mixed martial arts (MMA), NASCAR auto racing, and others. Complainant uses its marks TELEMUNDO and TELEMUNDO DEPORTES in connection with its television broadcasting services. Complainant has rights in the marks based on registration in the United States in, respectively, 1990 and 2019.
Complainant alleges that the disputed domain name is confusingly similar to its TELEMUNDO mark as it incorporates the mark in its entirety, adding only the generic term “sports” (“deportes” in Spanish), and the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TELEMUNDO mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to divert users from Complainant’s website to third-party websites that deposit malware on users’ computers under what is sometimes known as the “Automatic Rapid Reduction to Malware” or ARRM (previously referred to as “fast-flux DNS” or FFDNS). Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Further, Respondent has demonstrated a pattern of bad faith registrations as indicated by its role of respondent in past UDRP proceedings. Additionally, Respondent’s fraudulent use of the disputed domain name to redirect users to third-party websites that deposit malware onto users’ computers with an FFDNS service demonstrates bad faith. Finally, Respondent had actual notice of Complainant’s rights in the TELEMUNDO mark prior to registering the disputed domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark TELEMUNDO and uses it to market television broadcasting services.
Complainant’s rights in its mark date back to 1990.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website attempts to deposit malware on users’ computers. Respondent has a pattern and practice of bad faith registration and use of domain names.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name is confusingly similar to Complainant’s TELEMUNDO mark as it incorporates the mark in its entirety and merely adds the generic/descriptive term “sports” along with the gTLD “.com.” Generally, the addition of a descriptive term and a gTLD to a mark is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Thus, the Panel finds that the <telemundosports.com> domain name is confusingly similar to Complainant’s TELEMUNDO mark per Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use the TELEMUNDO mark in any way. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies the owner of the disputed domain name as “Carolina Rodrigues / Fundacion Comercio Electronico.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
The disputed domain name resolves to a website which is being used to divert users to third-party websites that deposit malware on users’ computers using a FFDNS scheme. Specifically, Complainant provides screenshots of the resolving website, alternately showing the solicitation to update Adobe Flash Player or to download a virus scanner; in reality, the links in question resolve to malware. Generally, use of a domain name to redirect users to third-party, malware-depositing websites using a FFDNS service is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (“Using a disputed domain name to operate an FFDNS scheme and distribute malicious software or phish for users’ information is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).”). The Panel therefore finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). Moreover, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent uses the disputed domain name to redirect users to third-party websites that deposit malware onto users’ computers with an FFDNS service. Generally, use of a FFDNS technique to distribute malware on user’s computer may demonstrate that a respondent is using a disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See United States Postal Service v. Dursun BAYRAK, FA 1788459 (Forum June 24, 2018) (“Respondent uses the at-issue domain name to reference various third party websites designed to distribute malware and perpetrate phishing schemes. For instance, on arrival at one of these websites visitors are presented with a notifications pretending to be from tech support that indicates that there are issues with the visitor’s PC that requires a payment to be fixed. Another pop-up window declares that ‘your computer has alerted us that it has been infected with a trojan and spyware’ and that personal information has been stolen. Fraudulent tech support services are offered to fix the contrived problems. Respondent’s use of the domain name is thus disruptive to Complainant’s business and indicates Respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv), and otherwise.”). The Panel therefore finds that Respondent registered and is using is using the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or 4b(iv).
Further, Respondent’s bad faith is demonstrated by its history of adverse UDRP proceedings, a list of which is included in the Complaint. A respondent may demonstrate a pattern of bad faith by being party to multiple transferred domains following UDRP decisions under Policy ¶ 4(b)(ii). See 7-Eleven, Inc. v. Carolina Rodrigues / Privacy Services Limited,. FA 1782025 (Forum May 14, 2018 ) (“Complainant argues that Respondent’s bad faith is evinced by Respondent’s numerous UDRP proceedings that resulted in transfers of domain names containing other famous or distinctive marks. Complainant provides a list of those UDRP proceedings. Thus, the Panel agrees and finds that Respondent registered and uses the <7-elevenrewards.com> domain name in bad faith under Policy ¶ 4(b)(ii))”); see also Serco Group Plc v. Administrator Dom, Muscari Holding Limited / Carolina Rodrigues, D2018-0185 (WIPO, March 21, 2018) (finding bad faith where “the Complainant avers that the Respondent has engaged in an abusive pattern of conduct by registering domain names containing various well-known trademarks.”); see also DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Accordingly, the Panel finds that Respondent’s bad faith is also demonstrated by a pattern of bad faith registrations under Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <telemundosports.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 24, 2019
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