Univision Communications Inc. v. mga enterprises limited
Claim Number: FA1007001336097
Complainant is Univision
Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP,
California, USA. Respondent is mga enterprises limited (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <univisionautos.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 July 19, 2010.
On July 20, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <univisionautos.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 July 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@univisionautos.com. Also on July 27, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 23, 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" through submission of a Written Notice, as defined in Rule 1. 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, <univisionautos.com>, is confusingly similar to Complainant’s UNIVISION.COM mark.
2. Respondent has no rights to or legitimate interests in the <univisionautos.com> domain name.
3. Respondent registered and used the <univisionautos.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Univision Communications Inc., is a
Spanish-language media company that operates in the
Mark Reg. No. Date Issued
UNIVISION 1,624,073 November 20, 1990;
UNIVISION 1,672,807 January 21, 1992;
UNIVISION 2,518,239 December 11, 2001;
UNIVISION 2,518,240 December 11, 2001;
UNIVISION.COM 2,518,241 December 11, 2001;
UNIVISION.COM 2,528,166 January 8, 2002;
UNIVISION RECORDS 2,881,179 September 7, 2004;
UNIVISION MUSIC PUBLISHING 3,214,587 March 6, 2007; and
UNIVISION MÓVIL 3,483,636 August 12, 2008.
Respondent, mga enterprises limited, registered the <univisionautos.com> domain name December 14, 2005. The disputed domain name resolves to a web page displaying a directory of pay-per-clicks that all refer to automobiles and compete with Complainant’s website, which has a web page focusing on automobiles.
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 draw such inferences that 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 owns multiple trademark registrations for the UNIVISION.COM and related marks with the United States Patent and Trademark Office (“USPTO”):
Mark Reg. No. Date Issued
UNIVISION 1,624,073 November 20, 1990;
UNIVISION 1,672,807 January 21, 1992;
UNIVISION 2,518,239 December 11, 2001;
UNIVISION 2,518,240 December 11, 2001;
UNIVISION.COM 2,518,241 December 11, 2001;
UNIVISION.COM 2,528,166 January 8, 2002;
UNIVISION RECORDS 2,881,179 September 7, 2004;
UNIVISION MUSIC PUBLISHING 3,214,587 March 6, 2007; and
UNIVISION MÓVIL 3,483,636 August 12, 2008.
The Panel finds that Complainant’s extensive trademark
registrations with the USPTO satisfies Policy ¶ 4(a)(i)
and establishes Complainant’s rights in the UNIVISION.COM mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June
29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the]
complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel also finds that Complainant’s
rights established through its USTPO trademark registrations are sufficient for
purposes of a Policy ¶ 4(a)(i) analysis even when
Respondent lives or operates in a country outside the
Complainant alleges that Respondent’s <univisionautos.com> domain name is
confusingly similar to Complainant’s UNIVISION.COM mark because the disputed
domain name varies from Complainant’s mark only in the insertion of the
descriptive term “autos” into Complainant’s mark. The Panel finds that introducing a term which
describes an element of Complainant’s website into Complainant’s mark to create
a disputed domain name fails to distinguish the disputed domain name according
to Policy ¶ 4(a)(i).
See Constellation Wines
Thus, the Panel finds that Respondent’s <univisionautos.com> domain name is confusingly similar to Complainant’s UNIVISION.COM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
In keeping with the requirements of Policy ¶ 4(a)(ii), Complainant made a prima facie case against Respondent’s having rights and legitimate interests in the disputed domain name. The burden now transfers to Respondent to demonstrate that it does have such rights or legitimate interests. Given Respondent’s silence and failure to respond, however, the Panel is permitted to make an inference that Respondent does not have any rights and legitimate interests in the disputed domain name and does not contest Complainant’s allegations. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Nonetheless, the Panel still examines the evidence in the record under a Policy ¶ 4(c) analysis in an effort to make a full determination on Respondent’s rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by
the <univisionautos.com>
domain name. The WHOIS information for
the disputed domain name does not provide any evidence showing that Respondent
is commonly known by the disputed domain name and no other such evidence in the
record suggests similar names between Respondent and the disputed domain names. The Panel accordingly finds that Respondent
is not commonly known by the disputed domain name and thus does not possess
rights and legitimate interests under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that the respondent does not have rights in a
domain name when the respondent is not known by the mark); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
Complainant contends that the only purpose of the <univisionautos.com> domain name is to host a list of pay-per-click links dealing with automobiles. The Panel finds that hosting pay-per-click links alone is insufficient use of the disputed domain name to meet the requirements of a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
The Panel finds that the disputed domain name is confusingly
similar to Complainant’s protected mark; Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(ii).
Complainant asserts that the links posted at Respondent’s <univisionautos.com> domain name all relate to automobiles and the automotive industry. Complainant argues that since it also has its own web page focusing on automobiles and providing automotive-related services to its customers, Respondent’s listing of links disrupts Complainant’s business of providing trusted information to its customers and competes with Complainant for the same Internet traffic. The Panel finds that Respondent’s actions support findings of bad faith registration and use according to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant alleges that the links posted at Respondent’s
<univisionautos.com> domain
name are pay-per-click links that generate revenue for Respondent when
clicked. Complainant asserts that its
customers are familiar with Complainant’s automotive-focused website and are
likely to be confused and attracted by Respondent’s disputed domain name,
thinking that it will lead to Complainant’s website. As these Internet users are seeking
information about automobiles, the links on Respondent’s resolving website are
likely to be of interest to the diverted Internet users and therefore likely to
result in more profit for Respondent.
The Panel finds that Respondent’s aim to attract, mislead, and profit
from Complainant’s prospective customers who are diverted in this manner also
supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
The Panel finds that Respondent registered and used the
disputed domain name in bad faith; 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 <univisionautos.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 6, 2010
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