DECISION

Gestmusic Endemol, S.A. v. operaciontriunfo.us and o.operaciontriunfo.us

Claim Number: FA0311000214337

PARTIES

Complainant is Gestmusic Endemol, S.A., Barcelona, Spain (“Complainant”) represented by Ferran Llaquet Ballarin, Avda. Diagonal, 510, 3°, 08006 Barcelona, Spain.  Respondent is o.operaciontriunfo.us and operaciontriunfo.us, Nop (Tampoco), 6969 Spain (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <operaciontriunfo.us>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 21, 2003; the Forum received a hard copy of the Complaint on December 1, 2003.

On November 24, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <operaciontriunfo.us> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On December 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 26, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 31, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

            A.  Complainant makes the following assertions:

1. Respondent’s <operaciontriunfo.us> domain name is identical to Complainant’s OPERACION TRIUNFO mark.

2. Respondent does not have any rights or legitimate interests in the <operaciontriunfo.us> domain name.

3. Respondent registered or used the <operaciontriunfo.us> domain name in bad faith.

B. Respondent has failed to submit a Response in this proceeding.

FINDINGS

Complainant has numerous Community trademark registrations and applications for its OPERACION TRIUNFO mark, issued by the Office for the Harmonization in the Internal Market (“OHIM”) (e.g. Reg. Nos. 2281277, 2553741, 2585115).  Complainant filed its earliest application for its mark with OHIM on June 28, 2001, and was granted registration on October 16, 2002. 

Complainant has also registered and/or filed applications for OPERACION TRIUNFO with various international registries, including with the United States Patent and Trademark Office (Ser. No. 78112841).

Complainant uses its OPERACION TRIUNFO mark in connection with television broadcasting, audiovisual programs production, and production of various types of music and videos, among other things.  Specifically, Complainant has used its mark for a television program “Operacion Triunfo,” broadcast on the public Spanish Television, and which broke all audience ratings known in Spain during its debut. 

Complainant owns registrations for the domain names <operaciontriunfo.com> and <operaciontriunfo.net> and operates websites at those locations.

Respondent registered the disputed domain name on April 29, 2002.  Respondent uses the domain name to provide pornographic content and services, presumably for profit.   

DISCUSSION

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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules.

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; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

Complainant has established rights in its OPERACION TRIUNFO mark through registration and continuous use since 2001.  See Gestmusic Endemol, S.A. v. JHOSPIEN, D2002-0845 (WIPO Oct. 24, 2002) finding that this Complainant satisfied the requirements of UDRP ¶ 4(a)(i) where it demonstrated prior use of the OPERACION TRIUNFO mark and had applied for registration of the mark with OHIM.

The disputed domain name is identical to Complainant’s registered OPERACION TRIUNFO mark pursuant to Policy ¶ 4(a)(i) because the name incorporates Complainant’s mark in its entirety.  See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) holding that confusing similarity is decided upon the inclusion of a trademark in the domain name; see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) holding that confusing similarity is decided upon the inclusion of a trademark in the domain name.

Additionally, Complainant’s mark is identical to the disputed domain name because the addition of a top-level domain is irrelevant for purposes of determining similarity under Policy ¶ 4(a)(i).  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Therefore, Policy ¶ 4(a)(i) is established.

Rights or Legitimate Interests

Respondent has not asserted any rights or legitimate interests in the domain name.  Therefore, the Panel may presume that Respondent lacks rights and legitimate interests in the domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names; see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) finding no rights or legitimate interests where Respondent fails to respond.

Also, no evidence has been provided to the Panel that suggests Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name pursuant to Policy ¶ 4(c)(i).

Furthermore, there is no evidence that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii).  Though Respondent’s WHOIS information lists Respondent’s name as “o. operaciontriunfo.us” and organization as “operaciontriunfo.us,” there is no evidence before the Panel that Respondent was actually commonly known by the domain name.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a domain name when Respondent is not known by the mark; see also Yoga Works, Inc. v. Arpita d/b/a Shanti Yoga Works, FA 155461 (Nat. Arb. Forum June 17, 2003) finding that 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 Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”.

Moreover, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv), because hosting pornographic material at a designated domain name that infringes upon another’s mark evidences a lack of rights and legitimate interests in the name.  See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult-oriented website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use; see also Paws, Inc. v. Zuccarini a/k/a Country Walk, 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 ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) stating that the fact that the “use of the disputed domain name in connection with pornographic images and links tarnishes and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or legitimate interests in the disputed domain name.

Therefore, Policy ¶ 4(a)(ii) is established.

Registration or Use in Bad Faith

Using domain names that are identical to another’s mark for the purpose of hosting pornographic material evidences bad faith use.  See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith; see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) finding that 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; see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name.

In addition, the facts steer the Panel to believe that Respondent used the name in bad faith, pursuant to Policy ¶ 4(b)(iv), by intentionally attracting Internet users to its site by means of creating confusion with Complainant’s mark, in order to generate revenue.  The reasons for this finding involve the notorious character of Complainant’s mark, the nature and ends pursued by the content provided at Respondent’s site, and the significant likelihood of confusion with Complainant’s identical mark.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain; see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site.

Therefore, Policy ¶ 4(a)(iii) is established.

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <operaciontriunfo.us> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: January 14, 2004

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