Piolin Productions, Inc. v. elcaradeperro
Claim Number: FA1002001307430
Complainant is Piolin Productions, Inc. (“Complainant”), represented by Matthew
A. Stratton of Harvey Siskind LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <piolincaradeperro.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 9, 2010; the National Arbitration Forum received a hard copy of the Complaint February 10, 2010.
On February 10, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <piolincaradeperro.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 22, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 15, 2010, 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@piolincaradeperro.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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:
1. The domain name that Respondent registered, <piolincaradeperro.com>, is confusingly similar to Complainant’s PIOLÍN mark.
2. Respondent has no right to or legitimate interests in the <piolincaradeperro.com> domain name.
3. Respondent registered and used the <piolincaradeperro.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Piolin
Productions, Inc., has used
its PIOLÍN mark in connection with a radio personality since 1988. Complainant operates
a radio business and related programming services, syndicated throughout the
Respondent, elcaradeperro, registered the disputed domain name July 24, 2007. The disputed domain name resolves to a fan website of the Complainant, then redirects those who access it to an advertisement site with links to other advertisement websites.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Complainant does not have a trademark registration for the PIOLÍN mark with the USPTO. However, trademark registration is unnecessary where Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).
Complainant asserts it has common law rights in its PIOLÍN
mark through its continuous use in commerce since 1989 and the consequent
secondary meaning acquired through its use of the mark. Complainant operates a Spanish language radio
show under its mark and the show is broadcast six days a week and syndicated
throughout the
Respondent’s <piolincaradeperro.com> domain name is confusingly similar to Complainant’s PIOLÍN mark because Respondent’s domain name incorporates the dominant feature of Complainant’s mark, adds the generic Spanish terms “cara de perro,” and adds the generic top-level domain “.com.” The Panel finds that such minor alterations to Complainant’s common law mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant made a prima facie case in supports of its allegations that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant does so, the burden of proof shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case, shifting the burden to the Respondent. Given Respondent’s failure to respond to the proceedings, the Panel still will analyze the record in light of Policy ¶ 4(c) before making a final determination as to Respondent’s rights and legitimate interests in the mark. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4 (a)(ii) of the Policy.”); see also G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”)
The WHOIS information for the <piolincaradeperro.com> domain name lists “elcaradeperro” as the registrant. Complainant asserts that Respondent is not licensed or otherwise authorized to use the PIOLÍN mark. On the surface, this entity appears to be known by the disputed domain name; however, without affirmative evidence evidence supporting it, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the 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 the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
The disputed domain name resolves to a website that initially purports to be a fan site for Complainant;
however, Claimant asserts that Respondent is not licensed or otherwise
authorized to use the PIOLÍN mark in any way. The
Panel finds that Respondent’s use of the <piolincaradeperro.com>
domain name does not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nintendo of Am. Inc. v. Jones,
D2000-0998 (WIPO Nov. 17, 2000) (finding that because a “Complainant has the
right to decide how its mark will be used in the context of the product or
products associated with the mark,” the unauthorized use of an identical domain
name within that very context is not legitimate); see also Mattel,
Inc. v. Bertolini, FA 128820 (Nat. Arb.
Forum Dec. 26, 2002) (“[T]his Arbitrator does not believe that merely being a
fan of trademarked goods or services and setting up a ‘fan club’ website is
sufficient to give a Respondent ‘rights to or legitimate interests in’ domain
names which include as their predominant feature the trademark registered and
owned by another.”).
The disputed domain name, after approximately thirty
seconds, automatically redirects the user to an unrelated website providing advertising
and links to other advertising sites. The Panel finds that Respondent’s use of
the <piolincaradeperro.com>
domain name provides further evidence that Respondent lacks legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(i)
and Policy ¶ 4(c)(iii). See Constellation
Wines
Complainant further contends that
the website resolving from the disputed domain name also occasionally contains
links to websites with adult-oriented content. The Panel finds that Respondent’s
use of the <piolincaradeperro.com>
domain name to display adult-oriented content is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Paws, Inc. v. Zuccarini,
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 Am.
Online, Inc. v. Bates, FA 192595 (Nat.
Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name
that is confusingly similar to another's mark by linking the domain name to an adult-oriented website [is] evidence that the registrant
lacks rights or legitimate interests in the domain name.”).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name and that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent used the <piolincaradeperro.com>
domain name initially by purporting it to be a fan
site. Claimant asserts that Respondent is not licensed or otherwise
authorized to use the PIOLÍN mark in that manner.
The Panel finds that Respondent’s registration and use of the <piolincaradeperro.com> domain name as
an unauthorized fan site with Complainant’s mark supports findings of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). Further, Internet users may become confused
as to whether or not Complainant is affiliated with the disputed resolving
website and this supports findings of bad faith registration and use. See Anne of Green Gable Licensing Auth.,
Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad
faith registration and use where the <anneofgreengables.com> domain name
resolved to an informational website that misled Internet users to believe that
the website was affiliated with the ANNE OF GREEN GABLES mark); see also Spacey v.
After
initially resolving to a purported fan site, Respondent tellingly uses the disputed domain name
to redirect users to an unrelated website providing advertising and links to
other advertising sites, unrelated to the services provided by Complainant.
Internet users, interested in Complainant and Complainant’s services, may
become confused as to Complainant’s sponsorship and affiliation of the
resolving website. Respondent attempts to profit from this confusion by presumably
collecting click-through fees. The Panel finds that Respondent’s registration
and use of the <piolincaradeperro.com>
domain name creates a likelihood of confusion with the Complainant’s mark and supports
findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also MySpace, Inc. v. Myspace
Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent
registered and used the <myspacebot.com> domain name in bad faith by
diverting Internet users seeking the complainant’s website to its own website
for commercial gain because the respondent likely profited from this diversion
scheme).
Respondent also uses the <piolincaradeperro.com> domain name to occasionally provide links to websites that contain adult-oriented content. The Panel finds that Respondent’s registration and use of the <piolincaradeperro.com> domain name to direct Internet users to adult-oriented content tarnishes Complainant’s mark and supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to an adult-oriented website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to a[n adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the 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).
The Panel finds that Respondent registered and used the disputed domain name in bad faith and that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <piolincaradeperro.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 7, 2010
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