Univision Communications Inc. v. Forthright Media / Michael Piotrowski
Claim Number: FA1211001470373
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is Forthright Media / Michael Piotrowski (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <univision19.com>, registered with Power Brand Center Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2012; the National Arbitration Forum received payment on November 8, 2012.
On November 19, 2012, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <univision19.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 November 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2012 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@univision19.com. Also on November 20, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
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" 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 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. Respondent’s <univision19.com> domain name, the domain name at issue, is confusingly similar to Complainant’s UNIVISION mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Univision Communications Inc., is the premiere Spanish-language media company in the U.S. and its portfolio includes television, radio, Internet, and mobile offerings that entertain, inform, and educate more Hispanics each day than any other media company in the country. Complainant owns and operates <univision.com>, the most-visited Spanish-language website in the United States. Complainant owns and shows evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the UNIVISION mark (e.g., Reg. No. 1,624,073, registered November 20, 1990). Complainant also owns trademark registrations with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) for the UNIVISION mark (e.g., Reg. No. 817,239). Complainant also owns other trademark registrations for the UNIVISION mark in numerous countries throughout the world.
Respondent’s <univision19.com> domain name is confusingly similar to Complainant’s UNIVISION mark because it contains Complainant’s mark entirely while adding the generic numbers “19,” which may signify KUVS Univision 19, Univision’s owned and operated television station in Sacramento, California. Further, the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish Respondent’s disputed domain name from Complainant’s UNIVISION mark. Respondent is not commonly known by the disputed domain name, where the WHOIS record identifies “Forthright Media / Michael Piotrowski” as the registrant. Respondent has never authorized Respondent to register or use Complainant’s UNIVISION mark as part of any domain name. Respondent is using the disputed domain name to feature a web directory with links to various third-party websites. Respondent is using the <univision19.com> domain name to redirect Internet users to a web directory featuring links to third-party websites unrelated to Complainant, for which Respondent presumably earns “click-through” or “referral” fees for redirecting Internet traffic in this manner. Respondent had both actual and constructive knowledge of Complainant’s mark at the time that he registered the <univision19.com> domain name, based on the notoriety of Complainant’s UNIVISION mark and the fact that Complainant had registered the UNIVISION mark with the USPTO. Respondent registered the <univision19.com> domain name on May 5, 2008.
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(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.”).
Complainant, Univision Communications Inc., asserts that it is the premiere Spanish-language media company in the U.S. and its portfolio includes television, radio, Internet, and mobile offerings that entertain, inform, and educate more Hispanics each day than any other media company in the country. Complainant owns and operates <univision.com>, which it claims is the most-visited Spanish-language website in the United States. Complainant owns and shows evidence of trademark registrations with the USPTO for the UNIVISION mark (e.g., Reg. No. 1,624,073, registered November 20, 1990). Complainant owns trademark registrations with the OHIM for the UNIVISION mark (e.g., Reg. No. 817,239). Complainant’s registration of the UNIVISION mark with OHIM and numerous other trademark offices sufficiently evidences Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Petroleo Brasileiro S.A. – Petrobras v. Munoz, FA 1222428 (Nat. Arb. Forum Oct. 16, 2008) (finding complainant’s multiple trademark registrations around the world, including those with OHIM, established complainant’s rights in its mark under Policy ¶ 4(a)(i)).
Respondent’s <univision19.com> domain name is confusingly similar to Complainant’s UNIVISION mark because it contains Complainant’s mark entirely while adding the generic number “19,” which may signify KUVS Univision 19, Univision’s owned and operated television station in Sacramento, California. The addition of generic numbers does not differentiate Respondent’s disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). 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). Respondent’s addition of the gTLD “.com” does not distinguish Respondent’s disputed domain name from Complainant’s UNIVISION mark. The addition of a gTLD does not eliminate confusing similarity between Respondent’s disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Thus, Respondent’s <univision19.com> domain name is confusingly similar to Complainant’s UNIVISION mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the disputed domain name, where the WHOIS record identifies “Forthright Media / Michael Piotrowski” as the registrant. Complainant never authorized Respondent to register or use Complainant’s UNIVISION mark as part of any domain name. Respondent fails to provide evidence that it is commonly known by the disputed domain name. Accordingly, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain name to feature a web directory with links to various third-party websites. Respondent’s disputed domain name connects to a website which features third-party links, such as “Noticias Univision,” “Univision Television,” and “Univision Com.” The third-party links featured on Respondent’s webpage may directly compete with Complainant’s business. Respondent’s use of the disputed domain name to display links that may compete with Complainant is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is using the <univision19.com> domain name to redirect Internet users to a web directory featuring links to third-party websites unrelated to Complainant, for which Respondent presumably earns “click-through” or “referral” fees for redirecting Internet traffic in this manner. The majority of the links featured on Respondent’s website reference UNIVISION” and under the “Related Searches” at the bottom of the webpage, there is a link for “Hotels Sacramento CA.” Respondent’s references to Complainant all create confusion and false association with Complainant. There is a substantial likelihood that consumers would mistakenly think or assume that Respondent’s disputed domain name was sponsored or authorized by, or was somehow affiliated or connected with Complainant. Respondent’s use of the disputed domain name to display competing links may constitute attraction for commercial gain under Policy ¶ 4(b)(iv), which demonstrates bad faith and registration under Policy ¶ 4(a)(iii). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Respondent had both actual and constructive knowledge of Complainant’s mark at the time that is registered the <univision19.com> domain name, based on the notoriety of Complainant’s UNIVISION mark and the fact that Complainant had registered the UNIVISION mark with the USPTO and numerous other trademark offices throughout the world. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the notoriety of Complainant's mark, this Panel finds that Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <univision19.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 2, 2013
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