National Arbitration Forum

 

DECISION

 

Univision Communications Inc. v. Acme Mail

Claim Number: FA1004001322077

 

PARTIES

Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega, of McDermott Will & Emery LLP, California, USA.  Respondent is Acme Mail (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <univison.com>, registered with Directnic, Ltd.

 

PANEL

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.

 

Jeffrey M. Samuels as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2010.

 

On April 29, 2010, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <univison.com> domain name is registered with Directnic, Ltd and that the Respondent is the current registrant of the name.  Directnic, Ltd has verified that Respondent is bound by the Directnic, Ltd 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 May 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2010 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@univison.com.  Also on May 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.

 

A timely Response was received and determined to be complete on May 19, 2010.[1]

A timely “Additional Submission,” dated May 21, 2010, was received from Complainant.

 

On May 26, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant Univision Communications Inc. is the premier Spanish-language media company in the U.S.  Its Univision Network is the most-watched Spanish-language broadcast TV network in the U.S., reaching 95% of U.S. Hispanic households.  Univision Radio is the largest Spanish-language radio broadcaster in the U.S. and owns and/or operates 68 radio stations in 16 of the top 25 U.S. Hispanic markets.  For 2009, Complainant’s net revenue from its TV, radio, internet and mobile operations was approximately $1.97 billion.

 

Complainant owns a number of U.S. trademark registrations for the mark UNIVISION, as used in connection with TV, radio, movie, and computer services.  The earliest date of first use in commerce in the U.S. is 1987. See Complaint, Annexes 1-9.  Complainant also owns registrations for its UNIVISION mark in other countries.  See Complaint, Annex 10.

 

Complainant asserts that it has rights in the UNIVISION mark by virtue of its registrations around the world and its continuous and widespread use of the mark since 1987.  Complainant notes that the disputed domain name was not registered until October 26, 2000, and that Respondent’s univison.com site redirects users to Respondent’s prizerewards.net web site where Respondent operates “ShopFreeBargains.com.”  See Complaint, Annex 14.

 

Complainant indicates that the disputed domain name, <univison.com>, is confusingly similar to the UNIVISION mark in that it merely omits the letter “i” between the letters “s” and “o.”  Moreover, Complainant maintains, the addition of the top-level domain “.com” does not distinguish Respondent’s domain name from Complainant’s UNIVISION mark.

 

Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name.  There is no indication, according to Complainant, that Respondent is commonly known by the domain name <univison.com>.  Complainant also declares that it has never authorized Respondent to register or use the UNIVISION mark as part of any domain name, nor is there any affiliation, connection or association between Complainant and Respondent.

 

Respondent, Complainant asserts, is engaging in what is commonly referred to as “typosquatting” and “it is well established … that `typosquatting’ is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use….”

 

With respect to the issue of “bad faith” registration and use, Complainant points out that prior ICANN panel decisions have determined that “typosquatting” is, by itself evidence of bad faith registration and use.  Complainant asserts that “[b]y taking advantage of the typographical mistake of Internet users to divert the users to his own website, Respondent is capitalizing on and profiting from the notoriety and goodwill associated with Complainant’s UNIVISION mark.”  Complainant notes that, at the time of registration of the disputed domain name, Complainant was already broadcasting in the Miami, Florida area, which is where Respondent resides.  Thus, Complainant declares, “it is inconceivable that Respondent’s registration and use of an intentionally misspelled version of Complainant’s UNIVISION mark as a domain name to divert traffic is not an attempt in bad faith to take advantage of the tremendous goodwill and fame of Complainant’s mark.” 

 

B. Respondent

In its Response, Respondent emphasizes that it is not affiliated or connected in any way with Complainant and that the disputed site includes a disclaimer to that effect.

 

Respondent also points out that many other companies own U.S. trademark registrations for the mark UNIVISION, that, in most cases, the name of the owner of such registrations does not include the term “Univision,” and that, therefore, it is irrelevant that Respondent, Acme Mail, is not commonly known as “univison.”

 

If Complainant wanted the disputed domain name, it should have registered it, Respondent asserts.  The fact that it did not shows its lack of interest in the subject domain name.

 

Respondent also contends that there can be no infringement in this case since it is not in the same line of work as Complainant.  “We offer free promotional giveaways and survey based promotions.  We are not in the television broadcasting business.”  In addition, Respondent asserts, it has never attempted to sell or rent its domain name to Complainant and is making a fair use of the domain name.

 

 

C. Additional Submissions

In its “Additional Submission,” Complainant labels as “simple nonsense” Respondent’s apparent contention that if it were affiliated with Complainant, it would be improper for it to have registered the domain name in dispute.  If the parties were affiliated, Complainant notes, then Respondent would have the right to register the subject domain.

 

Complainant also takes issue with Respondent’s contention that the parties’ lines of business do not overlap, at least to some extent.  Complainant points out that it frequently sponsors and conducts promotional giveaways, contests, sweepstakes, and surveys as a way to build and increase its fan base.  See Additional Submission, Exhibit A.

 

Complainant also asserts that the disclaimer on Respondent’s website does not eliminate deception or confusion.  “Confusion arises when Complainant’s users and fans accidentally mistype Complainant’s official web address UNIVISION.COM and instead end up on Respondent’s website.  This is precisely how Respondent makes money…. Thus, the disclaimer that Respondent is crowing about is of no use:  the damage has been done.”

 

Finally, Complainant notes that it need only show that it has rights in the trademark that forms the basis of the complaint.  Trademark law, Complainant points out, allows for identical or similar marks to coexist if used on significantly different and unrelated goods so that there is no likelihood of confusion.  Moreover, Complainant adds, with respect to the marks cited in the Response, Complainant has taken some action against the owners of such marks so as to assure that there is no likelihood of confusion.

 

FINDINGS

The Panel finds that: (1) the disputed domain name is confusingly similar to the UNIVISION mark; (2) Complainant has rights in the UNIVISION mark; (3) Respondent has no rights or legitimate interests in the disputed domain name; and (4) the disputed domain name was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

The Panel determines that the domain name <univison.com> is confusingly similar to the mark UNIVISION.  As pointed out by Complainant, the domain name differs from the mark only in that it omits the letter “i” between the letters “s” and “o” and includes the top-level domain name “.com.”  Such differences are clearly insufficient to avoid a finding of confusing similarity. This is a classic case of “typosquatting.”

 

The Panel further concludes that Complainant has rights in the mark UNIVISION.  The evidence indicates that Complainant owns numerous registrations for such mark and has used it since 1987.  The fact that others may own registrations or have rights in the mark UNIVISION for use on goods and/or services far removed from those on which Complainant uses its mark does not mean that Complainant does not have rights in the UNIVISION mark.

 

Rights or Legitimate Interests

 

The Panel holds that Complainant has sustained its burden of establishing that Respondent has no rights or legitimate interests in the subject domain name.  Given Respondent’s use of a confusingly similar domain name to draw Internet users to its giveaway site, it cannot be said that Respondent is making a bona fide use of the domain name.  Moreover, given the nature of the site, it is clear that Respondent is not making a noncommercial or fair use of the domain name.  Nor is there any evidence that Respondent is commonly known by the domain name.  Thus, contrary to Respondent’s assertion, the fact that Respondent’s name is Acme Mail is relevant to the outcome of this dispute.

 

Registration and Use in Bad Faith

 

The Panel concludes that the disputed domain name was registered and is being used in bad faith.  As noted above, Respondent is engaged in a classic case of typosqatting and such activity, by itself, supports a determination of bad faith registration and use.  See Vanguard Group, Inc. v. IQ Mgmt, Corp., FA328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, respondent has registered and used the vangard.com domain name in bad faith pursuant to Policy ¶4(a)(iii))”; Zone Labs, Inc. v. Zuccarini, FA190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the zonelarm.com domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting.  Typosquatting, itself, is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii)).”

 

The Panel further concludes that Respondent’s use of a confusingly similar domain name to redirect Internet users to Respondent’s site is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.  As Complainant notes, like Respondent, it also engages in promotional giveaway-type activities.  Moreover, paragraph 4(b)(iv) of the Policy also embraces a likelihood of confusion as to the source of the disputed site without regard to the goods and/or services offered at such site.

 

The fact that the disputed site includes a disclaimer does not dispel a finding of likelihood of confusion under paragraph 4(b)(iv) of the Policy.  See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith….”); Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.”)

 

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 <univison.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Jeffrey M. Samuels, Panelist
Dated: June 3, 2010