Univision Communications Inc. v. ICS Inc
Claim Number: FA1412001596604
Complainant is Univision Communications Inc. (“Complainant”), represented by Jorge Arciniega of McDermott Will & Emery LLP, California, USA. Respondent is ICS Inc (“Respondent”), Cayman Island.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <univisiontarjetaprepagada.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2014; the National Arbitration Forum received payment on December 22, 2014.
On December 25, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <univisiontarjetaprepagada.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 20, 2015 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@univisiontarjetaprepagada.com. Also on December 31, 2014, 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 January 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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
i) Complainant operates a Spanish-language media company under the UNIVISION name. Complainant has registered the UNIVISION mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,624,073, registered Nov. 20, 1990). The <univisiontarjetaprepagada.com> domain name is confusingly similar to the UNIVISION mark as it incorporates the mark in full and adds the generic Spanish term “tarjeta prepagada,” which translates to English as “prepaid card.”
ii) Respondent does not have any rights or legitimate interests in the disputed domain name. Nothing in the WHOIS record suggests that Respondent is commonly known by the disputed domain name. To further demonstrate Respondent’s lack of rights in the name, Respondent has parked the domain name with a website promoting links to websites unrelated to Complainant. Respondent presumably generates click-through revenue from these links.
iii) Respondent has engaged in bad faith registration and use. Respondent is using the disputed domain name to capitalize on the goodwill associated with Complainant’s mark. Respondent generates click-through or referral fees by redirecting traffic to the links promoted on the disputed landing page, which is emblematic of Policy ¶ 4(b)(iv) bad faith. Further evincing Respondent’s bad faith, Respondent registered the disputed domain name with actual or at least constructive knowledge of Complainant and the UNIVISION mark.
B. Respondent
Respondent did not submit a response. The disputed domain name was registered May 7, 2012.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 operates a Spanish-language media company under the UNIVISION name. Complainant has registered the UNIVISION mark with the USPTO (e.g., Reg. No. 1,624,073, registered Nov. 20, 1990). Complainant argues that such registrations demonstrate its rights in the mark for purposes of Policy ¶ 4(a)(i). The Panel agrees that Complainant’s registration of UNIVISION with the USPTO serves to establish rights in mark pursuant to Policy ¶ 4(a)(i), despite Respondent’s purported residence in the Cayman Islands. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Complainant argues that the <univisiontarjetaprepagada.com> domain name is confusingly similar to the UNIVISION mark as it incorporates the mark in full and adds the generic Spanish term “tarjeta prepagada,” which translates to English as “prepaid card.” The Panel notes that Complainant has provided a printout of a news report pertaining to the launch of prepaid cards branded with the UNIVISION mark. See Compl., at Attached Ex. 4. Complainant also urges that the addition of the generic top-level domain (“gTLD”) “.com” adds no distinguishing value. The Panel agrees that the <univisiontarjetaprepagada.com> domain name is confusingly similar to the UNIVISION mark pursuant to Policy ¶ 4(a)(i) as the domain name incorporates the mark in full with a Spanish language phrase relating to Complainant’s business and a non-distinguishing gTLD. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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.”).
Complainant argues that Respondent does not have any rights or legitimate interests in the disputed domain name. In so arguing, Complainant first contends that nothing in the WHOIS record suggests that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS record identifies “ICS Inc” as the registrant of the disputed domain name. As Respondent has failed to rebut this contention, the Panel determines that there is no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
To further demonstrate Respondent’s lack of rights in the name, Complainant claims that Respondent has parked the domain name to feature a website promoting links to websites unrelated to Complainant. Complainant adds that Respondent presumably generates click-through revenue from these links. The Panel notes that the disputed domain name resolves to feature links such as “Tarjeta Univision,” “Credit Card Bankruptcy,” and “Bankruptcy Lawyers.” See Compl., at Attached Ex. 6. The Panel determines that Respondent’s use of the disputed domain name in connection with pay-per-click links amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant argues that Respondent is using the disputed domain name to capitalize on the goodwill associated with Complainant’s mark. Specifically, Complainant alleges that Respondent generates click-through or referral fees by redirecting traffic to the links promoted on the disputed landing page, and argues that such misdirection for commercial gain is emblematic of Policy ¶ 4(b)(iv) bad faith. The Panel recalls that the disputed domain name resolves to promote links unrelated to Complainant’s offerings. See Compl., at Attached Ex. 6. The Panel agrees that Complainant’s efforts to mislead Internet users as to Complainant’s affiliation with the disputed domain name by operation of the confusingly similar domain name in connection with click-through links falls within the prohibited parameters of Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Further evincing Respondent’s bad faith, Complainant argues that Respondent registered the disputed domain name with actual or at least constructive knowledge of Complainant and the UNIVISION mark. While previous panels have been resistant to find evidence of bad faith based on constructive knowledge, panels have inferred actual knowledge where the circumstances warrant. For example, in Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012), the panel wrote, “Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).” The Panel infers Respondent’s actual knowledge based on the notoriety of the UNIVISION mark, and thus the Panel finds evidence of bad faith registration pursuant to 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 <univisiontarjetaprepagada.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 2, 2015
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